Archive for the ‘Biofuels Patents’ category

More Green Patent PR: Phytonix, Proterro and Others Tout Patents and Licenses

August 4th, 2014

I’ve written before (e.g., here and here) about tech firms’ penchant for patent PR.  Here are several recent contributions to the genre.

 

Phytonix Corporation, based in North Carolina, touts its new U.S. patent for biobutanol production technology in this press release.  The patent is U.S. Patent No. 8,735,651, entitled “Designer organisms for photobiological butanol production from carbon dioxide and water” (’651 Patent).

The ’651 Patent is directed to a biosafety-guarded photobiological butanol production technology based on designer transgenic plants, designer algae, designer blue-green algae (cyanobacteria and oxychlorobacteria), or designer plant cells.

But the company’s IP portfolio doesn’t end here; Phytonix wants you to know that it also has IP relating to its biosafety guarded technology that “uses redundant mechanisms to prevent the proliferation of our organisms outside of a chemicals & biofuels productions environment.”

Query whether Phytonix directly competes with  biobutanol industry leaders Butamax and Gevo, who have been embroiled in contentious patent litigation.

 

Meanwhile, Ion Power Group (IPG) has been busy patenting not only in the U.S. but also in Canada, China, Japan and Russia.  The energy R&D company’s IP law firm announced that IPG’s “ground-breaking” ion power plant technology is the subject of “international patents.”

The press release does not contain the patent numbers, but specific patent info can be found on the company’s patents page.

 

New Jersey-based Proterro recently announced the grant of U.S. Patent No. 8,728,783, succinctly titled “Photobioreactor” (’783 Patent).

The ’783 Patent is directed to a photobioreactor for cultivating photosynthetic microorganisms comprising a non-gelatinous, solid cultivation support suitable for providing nutrients and moisture to photosynthetic microorganisms and a physical barrier covering at least a portion of the surface of the cultivation support.

The news was picked up by Biofuels Digest.  The press release also mentions a new Mexican patent and a prior U.S. patent covering the company’s sucrose-producing cyanobacteria.

 

Of course, not all green patent PR pertains to patent grants.  Some relates to tech transfer.  In this vein, Innovative Environmental Technologies (IET) recently announces an exclusive licensing agreement with Provectus Environmental Products.

IET said the deal involves seven patents, including U.S. Patent No. 7,828,974, with the positively prolix title “The induction of reducing conditions and stimulating anaerobic process through the addition of dried micro-blue green algae and seaweed to accomplish accelerated dechlorinization of soil and groundwater contaminated with chlorinated solvents and heavy metals” and U.S. Patent No. 8,147,694, entitled “Method for the treatment of ground water and soils using mixtures of seaweed and kelp.”

The press release can be found here.

By the way, this breakdown of green patent PR subject matter – the majority being directed to patent prosecution events – is consistent with my findings on patent PR in the clean tech industry discussed here.

Clean Tech in Court: Green Patent Complaint Update, Part I

June 26th, 2014

A number of green patent complaints have been filed in the last several months in the areas of hybrid electric vehicles, ethanol production, LEDs, water treatment, and exhaust treatment catalysts.  This post covers new lawsuits filed from late 2013 to the end of March 2014.

 

Hybrid Electric Vehicles

Paice LLC v. Ford Motor Company

After major success asserting its patents against Toyota, the HEV development and licensing company Paice is at it again.  On February 19, 2014, Paice sued Ford Motor Company for patent infringement in federal court in Baltimore.

The rather lengthy complaint accuses Ford of infringing U.S. Patent Nos. 7,237,634, 7,104,347, 7,559,388, 8,214,097, and 7,455,134.  These patents are part of a large family tracing priority all the way back to 1999.  Each patent is entitled “Hybrid vehicles” and relates to hybrid vehicles and associated control systems.

In its complaint, Paice lays out the details of, among other things, its collaborative relationship with Ford and how it soured.  The accused products are Ford’s Fusion hybrid and plug-in hybrid, C-Max hybrid and plug-in hybrid, and Lincoln MKZ.

 

Biofuels (Ethanol Production)

GS Cleantech Corporation v. Pacific Ethanol Stockton LLC

GS Cleantech Corporation v. Pacific Ethanol Magic Valley, LLC et al.

GS recently initiated two new lawsuits involving its patented ethanol production processes.  A complaint filed March 17, 2014 in federal court in Sacramento, California accused Pacific Ethanol Stockton of infringing U.S. Patent No. 7,601,858, entitled “Method of processing ethanol byproducts and related subsystems” (’858 Patent).

The next day, GS sued Pacific Ethanol Magic Valley in the U.S. District Court for the District of Idaho.  The Idaho complaint asserted the ’858 Patent as well as U.S. Patent Nos. 8,008,516 and8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” and as 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.  Multiple actions were consolidated in the Southern District of Indiana, where the asserted patents were construed and re-construed.

 

LEDs

Luminus Devices, Inc. v. LED Engin, Inc.

Making its first green patent litigation appearance (to my knowledge), Massachusetts based Luminus Devices sued LED Engin in the U.S. District Court for the Northern District of California.

Filed back in November 2013, the complaint accuses LED Engin of infringing U.S. Patent No. 7,170,100 (’100 Patent).  Entitled “Packaging designs for LEDs,” the ’100 Patent is directed to an array of LEDs and an LED package.

The package includes a layer configured so that at least about 75% of the light that that emerges from the LED and impinges on the layer passes through the layer. The layer is disposed such that a distance between the surface of the LED and a surface of the layer nearest to the surface of the LED is from about five microns to about 400 microns.

The accused products are several LED emitters allegedly made and sold by LED Engin.

 

Lighting Science Group Corporation v. Cooper Lighting, LLC

On February 6, 2014 Florida LED lighting company Lighting Science Group (LSG) sued rival Cooper Lighting for patent infringement in federal court in Orlando.

The complaint alleges that Cooper infringes U.S. Patent No. 8,201,968 (’968 Patent) by its manufacture and sale of the Halo LED Recessed White Surface Disk Light products.

Entitled “Low profile light,” the ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.

 

Water Treatment

Envirogen Technologies, Inc. v. Maxim Construction Corporation

Envirogen Technologies, a Texas company that makes water purification systems, recently filed a lawsuit for breach of contract and patent infringement against Maxim Construction.

Filed March 25, 2014 in the U.S. District Court for the Northern District of Illinois, the complaint lists three patents – U.S. Patent Nos. 7,309,436 (’436 Patent), 6,878,286 (’286 Patent) and 7,041,223 (’223 Patent).

Entitled “High efficiency ion exchange system for removing contaminants from water,” the ’286 and ’223 Patents are related and are directed to a fixed bed ion exchange water purification system that combines features of single fixed bed ion exchange systems with those of a moving bed system.

The ’436 Patent is entitled “Process for removing perchlorate ions from water streams” and directed to methods and systems for removing perchiorate from water.

According to the complaint, Maxim failed to make all payments under a contract to purchase an Envirogen water purification system, and therefore its use of the system is unlicensed and infringing.

 

Exhaust Treatment Catalysts

EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.

EmeraChem Holdings, a Tennessee-based company that creates catalysts for gas and liquid fuels, sued Volkswagen in federal court in Knoxville, Tennessee on March 31, 2014.

The complaint asserts infringement of U.S. Patent Nos.:

 5,451,558, entitled “Process for the reaction and absorption of gaseous air pollutants, apparatus therefor and method of making the same”;

5,599,758, entitled “Reduction of absorbed nitrogen oxides by reaction with gas flow containing hydrogen and/or carbon monoxide”;

5,953,911, entitled “Regeneration of catalyst/absorber”;

6,037,307 , entitled “Catalyst/sorber for treating sulfur compound containing effluent”: and

7,951,346, entitled “Methods and systems for reducing particulate matter in a gaseous stream”.

According to the complaint, Volkswagen’s diesel powered vehicles equipped with exhaust treatment systems, NOx storage catalyst, and other exhaust treatment catalysts infringe one or more of the patents.

Danisco DJ Revived; Pre-Issuance Conduct Counts in “War Over Patents”

April 15th, 2014

previous post discussed the dismissal of Danisco‘s declaratory judgment action against its rival Novozymes.  As described by the San Francisco district court decision, the Danish companies are “reputedly the two major competitors in the field of developing and supplying industrial enzymes used in the process of converting corn into ethanol fuel.”

Danisco’s lawsuit sought a judgment that the company’s Rapid Starch Liquefaction (RSL) alpha-amylase products did not infringe Novozymes’s U.S. Patent No. 8,252,573 (’573 Patent) and that the ’573 Patent is invalid.

The ’573 Patent  is entitled “Alpha-amylase variant with altered properties” and is directed to an isolated variant polypeptide having alpha amylase activity and containing a proline substitution at position 188 (to yield a variant called “E188P”).

In the alternative, Danisco asked the court for a determination that its own U.S. Patent No. 8,084,240 (’240 Patent) has priority over the ’573 Patent.  The ’240 Patent is entitled “Geobacillus stearothermophilus alpha-amylase (AMYS) variants with improved properties” and directed to an isolated variant of a truncated Geobacillus stearothermophilus enzyme also containing the proline substitution at position 188.

Novozymes had added the position 188 proline substitution to a claim late in prosecution of the application that issued as the ’573 Patent after learning that Danisco’s ’240 Patent would be granted with such a claim.

Although the district court conceded that the circumstances might reasonably suggest that Novozymes wanted to enforce the ’573 Patent against Danisco at some point, it held that events occurring prior to patent grant alone cannot support declaratory judgment jurisdiction.

Danisco appealed the district court decision dismissing the case, and the Court of Appeals for the Federal Circuit recently reversed the lower court, holding there was an actual controversy and that the DJ action could be sustained.

The appeals court made clear that the distinction between a patentee’s activities before and after a patent issues is not significant to a DJ analysis that is supposed to be flexible:

The district court’s categorical distinction between pre- and post-issuance conduct is . . . irreconcilable with the Supreme Court’s insistence on applying a flexible totality of circumstances test, its rejection of technical bright line rules, and our own precedent.  Contrary to the district court’s stated view, we have never held that “pre-issuance conduct” cannot constitute an affirmative act . . .

The Federal Circuit found “the record demonstrates that a definite and concrete patent dispute exists” between the parties, based on Novozymes’s actions and statements about the Danisco enzyme product before and after its ’573 Patent issued:

Novozymes has insisted on multiple occasions that its ’573 patent claim reads on the BSG alpha-amylase with an E188P mutation, which is the active compound in Danisco’s RSL products and is claimed in Novozymes’s patent.  The record shows that Novozymes sought its patent because it believed that Danisco’s products would infringe once the claim issued.

Significantly, the court of appeals observed that the parties have clearly staked out opposing legal positions on the patent rights at issue:

Novozymes twice asserted that Danisco’s ’240 patent was invalid and that Novozymes, not Danisco, is entitled to a patent on the claimed BSG E188P alpha-amylase invention.  Danisco has taken a legal position that is entirely opposed to the position taken by Novozymes, viz., that Danisco successfully prosecuted and obtained the ’240 patent, that it is the rightful owner of the claimed invention, and that its RSL products do not infringe the claim of Novozymes’s ’573 patent.

In light of all the circumstances, including previous litigation and Novozymes’ conduct prior to issuance of the ’573 Patent, the Federal Circuit held that there is declaratory judgment jurisdiction here:

Novozymes has twice sued Danisco or its predecessors in interest for patent infringement regarding related liquefaction products.  The parties have plainly been at war over patents involving genetically modified alpha-amylase enzymes and are likely to be for the foreseeable future.  They thus have adverse legal interests over a dispute of sufficient reality that is capable of conclusive resolution through a declaratory judgment.

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.

More Green Patent PR: Aphios Announces Grant of Cellulosic Biomass Patent

February 18th, 2014

Readers of this blog know that I have a soft spot for patent PR, particularly green patent PR (see, e.g., here and here).  So I’m always interested in covering announcements by green tech companies about their patents.

Aphios, a Massachusetts company that develops technology for cellulosic biomass conversion, recently put out a press release announcing the grant of U.S. Patent No. 8,540,847 (’847 Patent).

Entitled “Methods and apparatus for processing cellulosic biomass,” the ’847 Patent is directed to methods and apparatus for making ethanol or other biofuels using what Aphios calls its Aosic process.

The apparatus (11) described and claimed in the patent comprises a first vessel (13) for receiving cellulosic biomass and conveying means (15) in fluid communication with the first vessel (13).  The apparatus (11) also comprises supercritical, critical, or near critical fluid means (17), which includes a source of gas, such as gas tank (41), holding carbon dioxide pressurized to form supercritical, critical, or near critical fluid.

The fluid means (17) is in fluid communication with conveying means (15) via conduit (31).  A pump (47) is connected to a heat exchanger (55), which controls the temperature of the supercritical, critical, or near critical fluid.

The cellulosic biomass is loaded into the first vessel (13) and becomes laden with the supercritical, critical, or near critical fluid.  Discharge means (21) is in fluid communication with the conveying means (15) for receiving cellulosic biomass laden with the supercritical, critical, or near critical gas and discharging  the gas to form a disrupted cellulosic biomass.

A second vessel assembly (23) may include a hydrolysis vessel (23a) and a fermentation vessel (23b) for further processing of the cellulosic biomass.  Discharge means (21), including a discharge pipe (71) is connected to a turbine (73), which captures the kinetic energy of the expanding gas.  The turbine (73) is coupled to an electric generator to recover and recycle energy from the process.

According to the press release, contacting the cellulosic biomass with the supercritical, critical, or near critical fluid or gas improves the process by separating the fibers of the biomass:

In the Aosic process, biomass is contacted with SuperFluids such as carbon dioxide with or without small quantities of polar solvents such as ethanol, both sourced from the downstream fermentation process.  Pressure is released and fibers are made more accessible to enzymes as a result of expansive forces of SuperFluids (about 10 times those of steam explosion) and carbonic acid hydrolysis.

The ’847 Patent says the process provides biomass recovery yields between 95 and 99 percent.  Thanks to Biofuels Digest, from whence I picked up the Aphios news.

The Top Green IP Stories of 2013

January 13th, 2014

Before we turn to new green IP issues as they unfold in 2014, here is a look back at some of the top stories from 2013.

 

No. 7:  Green Patent PR

Clean tech is competitive, and PR is one of the tools used to stand out in a competitive industry.  But who would have thought PR around green patents could be so prevalent and contentious?  After DuPont sued Heraeus for alleged infringement of a patent directed to solar paste, the chemical giant put out a press release about filing the suit and the problem of IP theft in clean tech.

Heraeus counterclaimed for unfair competition and later threatened a separate lawsuit over the press release.  DuPont then filed a declaratory judgment action asking an Oregon federal court to declare that the company’s press release and customer letters about its patent infringement suit against Heraeus do not violate unfair competition laws.

My research indicates that clean tech companies engage in a substantial amount of PR around patent matters, with the clean tech industry generating the fifth highest number of patent-focused press releases.  DuPont’s disputed press release notwithstanding, the vast majority of clean tech industry press releases relate to patent prosecution.

 

No. 6:  Boston University Leads LED Lit

LED patent litigation continued to grow in 2013.  Leading the way this past year was the Trustees of Boston University, which sued dozens of defendants including AU Optronics, BlackBerry Corporation, Dell, Fujifilm, HTC, Eastman Kodak, Olympus, Sharp, and Sony.

The patent in these suits is U.S. Patent No. 5,686,738, entitled “Highly insulated monocrystalline gallium nitride thin films” and directed to gallium nitride semiconductor devices and methods of preparing highly insulating GaN single crystal films in a molecular beam epitaxial growth chamber.

 

No. 5:  Criminalizing Greenwashing 2.0

As discussed in this space, a new greenwashing paradigm has emerged where cases are brought by or on behalf of commercial consumers and involve B-to-B communications and misrepresentations (as opposed to advertising of consumer products directed to individual consumers).

In 2013 we began to see a new species of greenwashing 2.0 case:  criminal actions brought by governmental authorities for environmental crimes and fraud (see, e.g., here and here).

In one case a Colorado company called Executive Recycling and some of its officers were sentenced to imprisonment and fines for falsely representing that the company would dispose of all electronic waste (mostly cathode ray tubes) in an environmentally friendly manner in the United States when it instead sold the electronic waste it received to brokers for export overseas to China and other countries.

In another, the feds prosecuted companies for allegedly generating and selling fraudulent Renewable Energy Credits (RINs), and Cargill separately brought a civil action involving similar allegations.

 

No. 4:  Sinovel Faces Criminal Indictment in US

The AMSC- Sinovel copyright and trade secret dispute involving wind turbine control systems was big news in 2012, but legally speaking, mostly civil.

That changed in 2013 when the U.S. Department of Justice filed an indictment in federal court in Wisconsin alleging that Sinovel, two of its employees, and a former AMSC employee conspired to commit trade secret theft and criminal copyright infringement.

The indictment said the purpose of the alleged conspiracy was to illegally obtain proprietary source code, software, equipment designs and technical drawings relating to AMSC’s wind turbine control systems., thereby cheating AMSC out of more than $800,000,000.

 

No. 3:  Greenwashing Costs LED Maker $21 Million

In an indication of how seriously the American justice system may now be taking greenwashing, a Los Angeles federal court enjoined LED maker Lights of America (LOA) and ordered the company to pay $21,165,863.47.

This followed a decision holding that LOA violated Section 5 of the FTC Act by making false claims about LED lamps replacing certain wattage incandescent lamps and about the lifetime of the company’s LED lamps.

The case was brought by the FTC, America’s competition and consumer watchdog agency.  The FTC was to receive the $21 million, and the court directed the FTC to deposit the money into a redress fund to be used for consumer redress.

 

No 2:  Burgeoning Biofuels Battles

While The Gevo-Butamax litigation was a major story of 2012, notable both for its size and as the first foray of big oil into biofuels patent suits, biofuels patent litigation in general makes the 2013 list.

Not only did Gevo and Butamax continue their “patent war over who can make biobutanol,” with big decisions starting to come down, but Danish enzyme maker Novozymes also was active in the courts, Danisco scored a big summary judgment win against Novozymes, GreenShift expanded its ethanol production patent enforcement campaign, and Neste’s biodiesel patent suits changed direction with the court staying the suits pending reexamination of the asserted patents.

 

No. 1:  Solar Patent Surge

Since the start of green patent history (admittedly a very brief era in the cosmic scheme of things), as recorded by the Clean Energy Patent Growth Index (CEPGI), fuel cells dominated other technologies and perennially led the green patent rankings.

That changed in 2013.  In its first-quarter report the CEPGI noted that the 217 solar patents granted were just one behind fuel cells’ 218, “the smallest differential on record [suggesting] that Solar patents are poised to pass Fuel Cell patents.”

As predicted, the Q2 report showed solar patents beating out fuel cell patents for the first time, surging ahead with 246 solar patents granted in the second quarter, with fuel cell patents in second place at 209.

According to CEPGI, “Solar patents’ quarterly win makes clear that innovation in this sector continues at a rapid pace despite the failures and consolidations of solar firms across that board that dominate cleantech media reports.”

 

Correction:  The e-alerts for the previous post announcing the opening of Green Patent Law indicated that they were sent from my old email address.  I think that problem has been corrected.  My new email address is elane@greenpatentlaw.com. 

 

 

 

 

Clean Tech in Court: Green Patent Complaint Update

September 13th, 2013

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

 

Biofuels

GS Cleantech Corporation v. Aemetis, Inc. et al.

GS Cleantech Corporation v. Homeland Energy Solutions, LLC

GS Cleantech Corporation v. Little Sioux Corn Processors, LLP

GS Cleantech Corporation v. Southwest Iowa Renewable Energy, LLC

GS recently fired off several new lawsuits involving its patented ethanol production processes.  A complaint filed August 14, 2013 in federal court in Fresno, California accused Aemetis Advanced Fuels of infringing U.S. Patent No. 7,601,858, entitled “Method of processing ethanol byproducts and related subsystems” (’858 Patent).

The other lawsuits, against Southwest Iowa Renewable Energy (Southwest Iowa Complaint), Little Sioux Corn Processors (Little Sioux Complaint), and Homeland Energy Solutions (Homeland Energy Complaint), were filed in July and August in the U.S. District Court for the Northern District of Iowa. 

The asserted patents in these complaints are the ’858 Patent, U.S. Patent Nos. 8,008,516 and 8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” as well as U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.” 

GS also asserted U.S. Patent No. 8,168,037, entitled “Method and systems for enhancing oil recovery from ethanol production byproducts,” against Homeland Energy Solutions. 

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.  Multiple actions were consolidated in the Southern District of Indiana, where the asserted patents were construed and re-construed.

 

LEDs

Trustees of Boston University v. Hewlett-Packard Co.

Trustees of Boston University v. Vyrian, Inc.

Trustees of Boston University v. Sierra IC, Inc.

In August Boston University initiated some new lawsuits in federal court in Boston, continuing its patent enforcement campaign against various LED makers and electronics manufacturers.  The complaints again assert U.S. Patent No. 5,686,738 (’738 Patent) (HP Complaint; Vyrian Complaint; Sierra Complaint) . 

The ’738 Patent is entitled “Highly insulated monocrystalline gallium nitride thin films” and directed to gallium nitride semiconductor devices and methods of preparing highly insulating GaN single crystal films in a molecular beam epitaxial growth chamber.

The accused products are various LED devices and products.

 

Koninklijke Philips N.V. v. Altair Engineering, Inc. et al.

Philips sued Altair in federal court in U.S. District Court for the Western District of Wisconsin requesting a declaratory judgment that U.S. Patent No. 7,049,761 (’761 Patent) is invalid and unenforceable and that Philips’ LED-based replacement tube products do not infringe the patent. 

The ’761 Patent is entitled “Light tube and power supply circuit” and directed to a light tube for a fluorescent light fixure having a plurality of light emitting diodes within the bulb.  According to the complaint, Altair has been trying to get Philips to take a license to the ’761 Patent. 

The complaint also charges Altair with a Lanham Act violation for making false or misleading representations that the ’761 is a “foundational” patent and only companies that have licensed the patent can make LED-based replacement tubes for fluorescent lighting fixtures.

 

Smart Grid

Emerson Electric Co. et al. v. Sipco LLC et al.

In what could prove to be an important case, Emerson is taking on a major clean tech non-practicing entity in Sipco LLC (and the closely related if not identical IPCo), an Atlanta patent licensing and assertion company that holds a number of patents, many relating to remote monitoring and control systems.

Filed in federal court in Atlanta on July 31, 2013, the complaint requests a declaratory judgment of invalidity and non-infringement of at least one claim of each of eight Sipco and IPCo patents.

The listed patents are U.S. Patent Nos. 6,437,692, 6,914,8937,103,511, 7,697,4928,013,7326,044,062, 6,249,516 and 8,000,314, which relate to remote monitoring and control systems.

According to the complaint, Emerson subsidiary Rosemount received a subpoena from Sipco requesting information on products including various wireless communication protocol-enable devices such as Zigbee, WirelessHART, ISA-100, Z-Wave, EnOcean and JenNet.

Sipco has sued utilities and various smart grid players that make smart meters, EV charging stations, building automation systems, and other energy management solutions (see, e.g., previous posts here, here, and here).

 

Betting on Biobutanol and Battling Butamax: A Conversation with Gevo’s General Counsel

September 11th, 2013

 

One of the biggest green patent stories in the last few years has been the burgeoning biobutanol battle between Gevo and BP-DuPont joint venture Butamax Advanced Biofuels.

As with other industries, clean tech companies engage in PR around their patent matters, and this patent litigation is no different.  Part of this green patent war has been fought through PR. 

So when I was offered the opportunity to speak with Brett Lund, Gevo’s Executive Vice President and General Counsel, about this litigation I jumped at the chance.

For starters, this is a very important battle.  The email offer to interview Mr. Lund noted that it’s the “first-ever litigation in the industry of advanced biofuels, and it’s not just one patent – it’s a patent war over who can make isobutanol.”

Lund echoed this point, telling me there are just two main players for isobutanol (there is something called n-butanol, but it’s a less desirable fuel). 

Isobutanol is a very good petroleum substitute and the “ideal molecule” for both fuels and chemicals.  A a water insoluble 4-carbon molecule, it doesn’t get diluted and can be put in pipelines and directly into a refinery.

 Our conversation got into some of the details of the patents initially asserted by Butamax – U.S. Patent Nos. 7,993,889 (’889 Patent) and  7,851,188 (’188 Patent). 

Lund said the patents relate to a naturally occurring isobutanol pathway that has “been around forever.”  Known for over 50 years, Lund told me this 5-step pathway can be used to make very small quantities of isobutanol for things like sake or beer, but it’s hard to produce in large quantities suitable for fuel use.

Gevo’s patents, on the other hand, relate to new, non-naturally occurring pathways that boost isobutanol production.

Lund and I also discussed Gevo’s counterclaims for infringement of U.S. Patent Nos. 8,017,375 (’375 Patent) and 8,017,376 (’376 Patent), directed to recombinant yeast that harbor a variety of genetic modifications helpful for isobutanol production.

While Gevo believes that Butamax’s design-arounds of the ’375 and ’376 Patents are covered under the doctrine of equivalents (DOE), a recent court decision held otherwise, granting Butamax’s motion of summary judgment that it does not infringe the patents, literally or under the DOE.

When asked why the proactive PR, Lund noted that Gevo is a public company with lots of investors and partners and “we want people to know the truth.”  He went on to say that Gevo highly regards patents and patent law.

With respect to Butamax’s patentsand applications, he told me Gevo knows about them, actively monitors them, and continues to be careful and cognizant not to use Butamax’s technology.

This important green patent war is likely to continue in the courtroom and the media.

Butamax Avoids Infringement of Two Gevo Patents on Summary Judgment

August 27th, 2013

I’ve been covering the ongoing patent litigation between advanced biofuels company Gevo and BP-DuPont joint venture Butamax over a number of patents relating to methods of producing biobutanol.

The lawsuit started in January 2011 with Butamax’s initial complaint filed in federal court in Delaware alleging infringement of U.S. Patent No. 7,851,188 (’188 Patent), later amended to include U.S. Patent No. 7,993,889 (’889 Patent).  Gevo counterclaimed, accusing Butamax of infringing U.S. Patent Nos. 8,017,375 (’375 Patent and 8,017,376 (’376 Patent).

Earlier this year, the court handed Gevo a partial victory when it granted the company’s motion for summary judgment of no infringement of the ’188 and ’889 Patents under the doctrine of equivalents. 

Now Butamax has notched a win in a recent decision granting its motion for summary judgment of non-infringement of the ’375 and ’376 Patents. 

The patents are directed to methods of producing isobutanol using a recombinant microorganism, achieving theoretical yields of greater than about 10%.  The claims of the ’375 Patent recite a 5-step chemical pathway, and the fourth step in the pathway is conversion of alpha-ketoisovalerate to isobutyraldehyde.

The problem for Gevo was that it had initially filed a broad claim covering the use of any enzyme to convert alpha-ketoisovalerate to isobutyraldehyde and later amended the claim to specifically recite an “alpha-ketoisovalerate decarboxylase from Lactococcus lactis.”  Butamax’s process uses a Lactococcus grayi enzyme from a different source and having a very different amino acid sequence than the Lactococcus lactis enzyme claimed by Gevo.

The court noted that, with the amendment, Gevo had argued that its L. lactis enzyme showed unexpected results to overcome a prior art rejection during prosecution of the application that matured as the ’375 Patent.  Therefore, to prove that the Butamax process infringes the ’375 Patent under the doctrine of equivalents, Gevo needed to demonstrate that “the L. grayi enzyme or any other enzyme also yielded the unexpected results that it relied on to overcome the prior art.”

The court held that Gevo could not prevail on infringement under the doctrine of equivalents and granted Butamax’s motion for summary judgment:

To allow Gevo to allege that the enzymes are equivalent “would vitiate [the] claim limitation” requiring an “alpha-ketoisovalerate decarboxylase from Lactococcus lactis.”….Therefore, Gevo cannot assert infringement of independent claim 1 through the application of the doctrine of equivalents for enzymes other than what it specifically claimed, i.e., an “alpha-ketoisovalerate decarboxylase from Lactococcus lactis.”….Gevo does not argue that Butamax’s use of the L. grayi enzyme literally infringes independent claim 1 of the ’375 patent.  For the foregoing reasons, the court grants Butamax’s motion for summary judgment of non-infringement of the asserted claims 1-3 and 5-7 of the ’375 patent.

The claim element at issue in the ’376 Patent was the recombinant overexpression of the gene coding the Aft protein, causing an increase of Aft protein in the cell.  The function of the claim is to increase the enzymatic activity of the enzyme DHAD.  This is achieved through recombinant yeast cells engineered to provide increased expression of Aft1 and/or Aft2.

However, in Butamax’s strain, there is a deletion of an FRA2 gene, which does not directly produce excess Aft protein, but instead removes the negative regulator, allowing native Aft protein to be used in a greater amount.  Gevo argued that deleting the FRA2 gene is equivalent to overexpressing the Aft gene.

The court disagreed because the claim language of the ’376 Patent requires overexpression of the Aft protein:

In the case at bar, to find that Butamax’s strains are the equivalent of Gevo’s strains would render the limitation of overexpressing Aft superfluous and would essentially negate the manner in which the limitation achieves transcription of the genes in the iron regulation.

The court further held there could be no infringement under the doctrine of equivalents because of the different functions and operations of the FRA2 deletion and the Aft overexpression:

The deletion of FRA2 does not perform the same function in substantially the same way as the overexpression of Aft1, as it does not increase the Aft protein levels as called for by the claim, in order to then increase the enzymatic activity of DHAD.  Instead the deletion of FRA allows native Aft1 protein to be used in the iron regulation.  As the claim language (and indeed the parties’ agreed upon construction) requires the increase of Aft1 via overexpression, the court concludes that the doctrine of equivalents does not apply.

So Butamax went two for two on non-infringement, succeeding on summary judgment for both the ’375 and ’376 Patents.

Butamax also achieved a partial victory on invalidity, as the court granted its motion for summary judgment that the ’375 Patent is invalid for lack of enablement and written description.  The patent claims high yields of glucose of greater than 50% up to greater than 97.5% while the examples in the written description show a highest obtained yield of only 12.8%.

Thus, the court held the ’375 Patent invalid for lack of written description support for the claims:

As to written description, the court concludes that Butamax has shown, by clear and convincing evidence, that persons skilled in the art would not recognize a description of the higher yields of the claimed invention.

And on enablement:

The court concludes that Gevo has only offered conclusory allegations to support yields above the reported 12.8% and, therefore, has not offered any evidence to show that the full scope of claim 1 was enabled.  There is no expert testimony that would allow a reasonable jury to conclude that the higher yields would be achievable at all, or at least without undue experimentation.

On validity of the ’376 Patent, the only success for Gevo in this decision, the court found the parties raised genuine issues of fact as to whether the patent has adequate written description and the claims are enabled and therefore denied Butamax’s summary judgment motion. 

 

Novozymes Did Not Possess Claimed Biofuels Enzyme (and is Dispossessed of $18 Million)

August 23rd, 2013

Previous posts, e.g., here and here, discussed the patent infringement litigation between Danish biopharm rivals Novozymes and Danisco (now owned by DuPont), which are both active in developing enzymes used in the production of biofuels.

In the suit, Novozymes accused Danisco of infringing U.S. Patent No. 7,713,723 (’723 Patent) by selling alpha amylase enzymes including Danisco’s GC358 product (see the complaint here: novozymes_complaint.pdf).

The ’723 Patent, which claims priority back to an application filed in 2000, is entitled “Alpha amylase mutants with altered properties” and relates to variants of certain alpha amylases that exhibit altered stability under high temperatures, low pH and other conditions.  The patented variants can be used for starch conversion in ethanol production. 

The case has seen some legal twists and turns.  In February 2011, the’ 723 Patent survived a close shave on Danisco’s summary judgment motion of invalidity based on a written description argument.  Then, in November 2011, the jury found that Danisco infringed the ’723 Patent and awarded Novozymes over $18 million in damages.

There was a dramatic turnaround when Danisco’s post-trial motion succeeded in persuading the trial court judge that the jury verdict should be vacated and the patent declared invalid for failure to satisfy the written description requirement.

A U.S. patent must have an adequate written description to be valid.  This means the patent’s specification (which includes the written description and figures) must convey to a person skilled in the relevant technical field that the inventor actually invented and “had possession” of the claimed invention.

Danisco argued that the ’723 Patent – directed to a substitution of an amino acid at position 239 in the alpha-amylase protein - was inadequate because the written description lists position 239 as one of 33 possible positions for an “alteration” and lists a substitution as just one possible type of alteration.  The trial court agreed and invalidated the patent.

Novozymes appealed this final decision, and recently the U.S. Court of Appeals for the Federal Circuit affirmed that the ’723 Patent is invalid, in all likelihood ending the case.

The Federal Circuit found that the written description of the original ’723 Patent does provide “formal textual support” for the claimed enzymes, but it fails to describe the “actual functioning, thermostable alpha-amylase variants” recited in the claims.  There were too many possibilities, the court said, and no instruction on how to narrow them:

[O]ne searces the 2000 application in vain for the disclosure of even a single species that falls within the claims or for any “blaze marks” that would lead an ordinarily skilled investigator toward such a species among a slew of competing possibilities.

While the 2000 application does specifically describe a substitution at position 239 (S239W), that particular substitution does not confer increased thermostability in alpha-amylase enzymes as claimed in the ’723 Patent, and there is no indication that “Novozymes had invented any thermostable alpha-amylase variants substituted at amino acid position 239 by the time of filing.”

To do so, the court stated, Novozymes would have had to actually make and test individual variants or at least identify subclasses of variants that would be expected to possess the claimed properties.  The 2000 application does not go nearly far enough in this regard:

At best, the 2000 application describes a roadmap for producing candidate alpha-amylase variants and then determining which might exhibit enhanced thermostability.

Accordingly, the Federal Circuit affirmed the district court’s judgment of invalidity for insufficient written description:

We hold that no reasonable jury could find that the claims of the ’723 patent meet the written description requirement…and that the district court therefore correctly entered judgment as a matter of law invalidating those claims.  In contrast to the claims – which narrowly recite specific alpha-amylase variants that result from mutating a particular parent enzyme at a single amino acid position to yield distinctive functional properties – the supporting disclosure of the 2000 application provides only generalized guidance listing several variables that might, in some combination lead to a useful result.  Taking the claims as a whole rather than as the sum of their individual limitations, nothing in the 2000 application indicates that Novozymes then possessed what it now claims.

This case highlights a common patent prosecution practice used by technology firms to compete with their close rivals, that is, keeping an old patent application alive to preserve the early priority date and drafting claims to ensnare a competitor’s new product.

As mentioned above, the ’723 Patent traces priority back to an application filed in 2000.  It was only upon learning that DuPont had introduced a thermostable BSG alpha-amylase variant substituted at position 239 that Novozymes filed a new continuation application in December 2009 with claims directed to variants substituted at position 239.

There would be nothing wrong with that if the newly claimed subject matter had been fully disclosed in the original 2000 application.  However, the courts found that was not the case here.  In its decision on post-trial motions, the trial court noted that a patentee cannot later flesh out the invention:

The concern is that a patentee may attempt to use later filed claims, relying on more recently discovered data, to expand the scope of his invention or to complete an idea.