Archive for the ‘Green Patents’ category

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.

San Diego Clean Tech Open Biz Briefing to Highlight Eco-marks and Green Patent Perspectives

April 7th, 2014

If you’re in or around San Diego this week be sure to check out the Clean Tech Open Business Briefing this Thursday, April 10th.

The Cleantech Open is a non-profit organization that runs the world’s largest cleantech accelerator.  The Business Accelerator fosters promising startups in cleantech fields through a six-month program that includes cutting-edge entrepreneur training and mentoring (including in IP!), client and partner opportunities, and funding connections.

The business briefings bring together Clean Tech Open members and staff and early-stage clean tech start-ups and entrepreneurs.  Attendees will get an overview of the Cleantech Open and the Business Accelerator.

I will be speaking on some broad themes about the role of patents in the clean tech industry.  Entitled “Green Patents and Green Branding:  Global Perspectives and News You Can Use,” my talk will cover a range of big picture stuff and practical info on green patenting and protecting eco-marks.

The event will be held at the World Resources SimCenter in downtown San Diego from 6:00-8:00 PM.  You can find more information about the event and register here.

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

March 25th, 2014

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

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

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

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

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

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

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

Butamax Wins on Appeal as Federal Circuit Reverses Enzyme Claim Construction

March 18th, 2014

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Green Patent Fast Track Opens in Taiwan

March 11th, 2014

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

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

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

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

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

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

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

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

On Green Patenting, Sewage Sludge, and EPA Rulings and Regulations

February 25th, 2014

Environmental regulations can, of course, impact the development and implementation of green technologies.  This can happen on an industry level, for example, when automobile fuel efficiency technology is improved in response to rising CAFE standards.

It can also happen on a smaller scale and affect one company at a time, such as MaxWest Environmental Systems (Maxwest), which has developed gasification technology to break down sewage sludge.

The U.S. Environmental Protection Agency (EPA) recently ruled that MaxWest’s patented gasifier is not an incinerator and therefore will not be regulated as such.  According to the company, this means the technology can be developed and implemented at a lower cost to municipalities (see the press release here).

MaxWest owns at least one patent and one published patent application relating to its gasification technology.  U.S. Application Publication No. 2013/0195727 (’727 Application) is entitled “Fluidized bed biogasifier and method for gasifying biosolids” and directed to a gasifier and methods of gasifying biosolids obtained from sewage sludge.

A fluid bed gasifier (200) includes a bubbling reactor bed section (204) which receives sewage sludge through feed inlets (201) and flue gas through a flue gas inlet (203).  The gasifier has a freeboard section (205) between the reactor bed section (204) and the outlet (210) of the gasifier.

 

A cyclone separator (207) separates material exhausted from the fluidized bed reactor into clean producer gas for recovery and ash for disposal.  An oxygen monitor (209) may be used to help control oxygen levels in the gasification process together with a producer gas control (208), which monitors oxygen and carbon monoxide levels in the producer gas.

It appears that the control of oxygen levels was critical to the EPA ruling.  According to the ’727 Application, the biogasification process occurs in an “oxygen starved environment” which prevents combustion.  Because there is no combustion, the gasifier is not classified as an incinerator.

An older gasifier technology is described and claimed in MaxWest’s U.S. Patent No. 7,793,601 (’601 Patent), issued in 2010 from an application filed back in 2005.   The ’601 Patent is entitled “Side feed/centre ash dump system” and directed to an apparatus for gasifying solid fuel where the biomass feed material is introduced into the primary oxidation chamber (400) through in opening (408) in the side of a wall (402) or in the floor of the chamber (400).

The wall (402) has multiple layers, and the innermost layer (405) is made of a high-temperature refractory material capable of withstanding elevated temperatures.  According to the ’601 Patent, the wall (402) is therefore capable of allowing oxidation of biomass while maintaining a tolerable skin temperature on the outside of the wall.

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.

U.S. Trade Agency’s China Focus Good for Green Tech Companies

February 11th, 2014

The Office of the United States Trade Representative (USTR) is the federal agency responsible for conducting trade negotiations and developing and coordinating U.S. trade policy.

As it did last year, the USTR will again make intellectual property rights (IPR) a top priority in trade relations with China in 2014.  While Hollywood movie copyrights and drug patents may be the first IPRs that come to mind, IPR in green technologies could also be heavily impacted by the USTR’s attention to China.

The copyright and trade secret dispute between American Superconductor (AMSC) and Sinovel (see, e.g., previous posts hereherehere and here), a Chinese wind turbine manufacturer, highlights the risks of doing clean tech business in China and provides an indication of what is at stake for green IPR holders.

In that case, AMSC accused Sinovel of unauthorized use of its turbine control software source code and the binary code, or upper layer, of its software for certain power converters used in its 1.5 MW turbines.  AMSC alleged that Sinovel illegally used the source code to develop a software modification so Sinovel could circumvent the encryption and remove technical protection measures on the power converters.

The U.S. government – not the USTR, but the Department of Justice – got involved when it 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.  According to the indictment, AMSC was cheated out of $800,000,000.

By tying IP to trade, The USTR may be able to obtain tangible improvements such as tougher laws and improved enforcement measures.  Hopefully, this could cause a larger shift in attitude in China toward one of respect for IPR, a change that would help both US and Chinese clean tech companies.

Of course, the USTR’s bailiwick extends beyond IP, and the clean tech industry benefits from its other activities as well.   Most notable, perhaps, was the joint effort of the USTR and U.S. Customs and Border Protection to enforce trade duty orders against Chinese solar panel makers engaged in unfair trade practices.

US-Chinese relations are a hot topic in clean tech.  Indeed, one of the panels at this year’s UC Hastings Cleantech Roundtable is entitled “Beyond Trade Wars:  Enhancing US-China Clean Tech Relations.”

Guest Post: Matthew Rimmer on Fossil Free Patent Law

January 21st, 2014

Patent law has a dirty history. A legal mechanism refined in the industrial revolution, patent law has sought to encourage manufacturing and industry – the ‘Progress of Science and the Useful Arts’. Patent law has provided incentives for research and development for a wide range of polluting technologies, such as oil, coal, gas.

The world’s largest oilfield service providers have built upon a large portfolio of patents to protect their research and development. Baker Hughes obtained 138 patents in 2012 and 368 patents in 2013. Schlumberger’s patents rose to 588 in 2013 from 235 in 2012. Halliburton’s patents rose to 301 in 2013.

Halliburton was awarded more than $35 million in damages after winning a federal trial in Dallas in February 2012 against Weatherford International Ltd. over a patented tool used in well bores.

The major fossil fuel companies – Chevron, ExxonMobil, Shell, BP and ConocoPhilips – have also built large portfolios of intellectual property, relying upon patent law, trade mark law, and trade secrets.

There have also been efforts to patent new techniques and strategies in respect of ‘fracking’ – hydraulic fracturing. Daniel Cahoy and his colleagues argue that Fracking Patents have emerged as a means of Information Containment. 

Increasingly, environmental groups and climate activists have challenged investments in fossil fuels.

Bill McKibbin of 350.org has emphasized that oil, coal, and gas companies are radicals because ‘they’re willing to alter the chemical composition of the atmosphere to make money.’ He maintained that such companies should lose their social license and respectability: ‘If it is wrong to wreck the climate, then it is wrong to profit from that wreckage’.

Accordingly, 350.org has organised a fossil fuel divestment movement. The organisation has encouraged university and educational institutions to divest themselves of fossil fuel stocks. Cities such as Portland, Seattle, and San Francisco have pushed ahead with fossil fuel divestment policies in relation to city pension funds. Superannuation funds and sovereign funds have been encouraged to engage socially responsible investment.

It is only a matter of time before environmental and climate activists challenge the validity of fossil fuel investments in respect of intellectual property.

Recently, there has been much debate about the limits of patentable subject matter in the courts. The Supreme Court of the United States has sought to narrow and limit the boundaries of patentable subject matter in a trilogy of cases – Bilski v. Kappos; Mayo v. Prometheus; and Association of Molecular Pathologists v. Myriad Genetics.

There is a growing debate whether there should be limits in respect of patentability in respect of polluting technologies. Article 27 (2) of the TRIPS Agreement 1994 recognises that ‘members may exclude from  patentability inventions… [in order] to avoid serious prejudice to the environment’.

Professor Estelle Derclaye from the University of Nottingham has argued that ‘patent offices could either not grant patents for any invention which emits CO2 or make a cost-benefit analysis in terms of the value of the invention for society and the levels of CO2 emitted.’ Examining European law, she suggests: ‘Applying these principles to global warming, it could mean that the cost-benefit analysis test could be used only if there is evidence that a specific invention causes actual damage or disadvantage to the environment.’

In the past, there have been civil society groups and activist movements which have sought to challenge the patentability of controversial subject matter. Thus, there has been a concerted push by the free software movement to prohibit patents in respect of software. There have been demands to abolish business method patents particularly in light of the Global Financial Crisis. Organic farmers, consumer rights’ activists, and environmental groups have protested over the granting of patents in respect of genetically modified crops.

In the field of health, there has been concern in respect of the patent eligibility of methods of human treatment, genetic testing, and stem cells. Greenpeace has been particularly active in challenging patents in the field of biotechnology. There has been much concern about the problem of biopiracy – particularly amongst developing countries and least developed countries. Futurists like the ETC Group have worried about the grant of patents in respect of emerging technologies – such as nanotechnology, synthetic biology, and geo-engineering.

It is inevitable that environmental groups and climate activists will push for a ban on patents in respect of fossil fuels – such as oil, gas, and coal. It is also likely that civil society groups will engage in patent-busting, and challenge the validity of individual patents held by fossil fuel companies.

There will also be a further push to reform the patent regime to encourage the development of clean technologies and renewable energy. Francis Gurry, the Director-General of the World Intellectual Property Organization, has commented:

Human activity, including decades of technological development, has damaged our planet. Wide-spread pollution and spiraling consumption of the world’s mineral and biological reserves have put unprecedented stress on the environment. Climate change is one of the greatest threats ever faced by society: glaciers are disappearing; desertification is increasing; in Africa alone, between 75 and 250 million people will face increased water shortages by 2020.

Gurry has maintained: ‘As human activity caused the problem, so too can human activity find the solutions’. He has insisted: ‘Green innovation – the development and diffusion of technological means to tackle climate change – is key to halting the depletion of the earth’s resources.’

There is a need for patent law to become fossil fuel free, and support research and development in respect of clean energy.

 

*Dr. Matthew Rimmer is an Australian Research Council Future Fellow, working on Intellectual Property and Climate Change.  He is an associate professor at the ANU College of Law, an associate director of the Australian Centre for Intellectual Property in Agriculture (ACIPA), and a director of the Australian Digital Alliance.

Biofuels Patents Surge; Small Players Drive Solar Lead: CEPGI Q3 2013 Report

January 16th, 2014

 

The Clean Energy Patent Growth Index (CEPGI) recently released its Third Quarter 2013 Results.  Researched and published by the Heslin Rothenberg law firm, CEPGI is a quarterly report on clean energy patents granted in the United States.

CEPGI has been tracking green patent trends by technology sector, assignee, and geography since 2002.  Until very recently, fuel cell patents were the perennial leader.  But as of the last report for Q2 2013, solar patents took the lead.

Though dropping by 21 in the third quarter, solar patents held the lead, with 225 granted patents in Q3.  Fuel cell patents were in second place (195), with wind in third place with 146.  According to the report, wind patents were down 5 from the second quarter and dropped 24 compared to the same period in 2012.

Hybrid-electric vehicle patents were in fourth place, with 108, up 14 from the last quarter and representing a large year-on-year jump of 27 patents.  The largest surge was in biofuels/biomass patents, which finished with its highest ever quarterly total of 64.  This was a 17-patent increase from the second quarter and a jump of 25 from Q3 2012.

The top green patent assignee in the third quarter was General Motors, with 40 patents, with Hyundai coming in second (31) and Toyota and Samsung tied for third place (27).  Mitsubishi and GE were next with 25 and 21 patents, respectively, both primarily relating to wind.  Rounding out the top ten were Honda, Ford, Nissan, and Kia.

The report notes that cross-referencing the assignee list with the technologies indicates that small entities are more active than large corporations in solar patenting:

[D]espite there being more Solar patents granted in the third quarter than the other technologies, among the top ten clean energy patent grantees, Fuel Cells and Hybrid/Electric Vehicle patents vastly outperformed Solar with Fuel Cells topping Solar by over eight times, at 107 to 13, suggesting that the large patent grantees are not driving the explosion in Solar patents, and instead smaller patent grantees are driving this trend.

CEPGI also breaks out patent grants by country/state of the assignee.  Japan was the leader, with 151 patents granted, with California a distant second place with 70.  Korea was in third place with 69 patents, followed by Michigan (61), Germany (55), New York (34), and Taiwan 31.  Other states and countries with significant numbers of clean energy patents included Massachusetts (18), Texas (16), Denmark (15), Spain (14), and China (13).