Archive for the ‘IP Litigation’ category

Paice Goes Straight to the Border with Patent Complaint Against VW

May 3rd, 2016

l_paice

Over the years this blog has covered important patent litigation and settlements involving hybrid vehicle technology company Paice and some major automakers, including Hyundai/Kia, Toyota, and Ford (see, e.g., the Ford post here).

Paice has notched up some big wins, including a $28.9 million jury award against Hyundai and Kia and a $4.3 million jury award against Toyota, and has and entered into at least three license agreements:  recently with Hyundai and Kia, with Ford, and back in 2010 with Toyota.

Although these cases have been litigated in various forums through the years, Paice was forced to make a tactical shift in venue selection after the U.S. Supreme Court’s eBay v. MercExchange decision in 2006.

In eBay the Supreme Court reversed the U.S. courts’ long-standing practice of automatically issuing an injunction upon a finding of patent infringement and instead held that the traditional four-factor equitable test for injunctive relief must be analyzed in each case brought under the patent statute.

The eBay decision came down just as the Paice-Toyota trial court was deliberating Paice’s motion for an injunction against Toyota.  With the trial court suddenly bound to analyze the four injunction factors, it refused to grant an injunction, instead awarding Paice an ongoing royalty of $25 per infringing vehicle (a figure that was later raised to $98 per vehicle).

So Paice turned to the U.S. International Trade Commission (ITC) to seek an exclusion order that would have banned importation of infringing vehicles.

The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337 (Section 337).

It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

Also, critically for Paice and other non-practicing entities, the ITC is not bound by the eBay decision, which governs injunctive relief analysis under the patent statute, not Section 337 trade law (for a detailed review of the effect of eBay and the ITC on clean tech patent litigation see my article here).

Facing the very real prospect of an import ban, Toyota came to the negotiating table and, settled the suit, and entered into a licensing deal with Paice.

Which brings us to the latest news and the subject of this post.  Paice recently went back to the border and filed a complaint against Volkswagen (together with Porsche and Audi), asking the ITC to investigate alleged infringement of U.S. Patent Nos. 7,237,634, 7,104,347, and 8,214,097.

The three related patents are entitled “Hybrid vehicles” and cover hybrid electric vehicles utilizing an internal combustion engine with series parallel electric motors, regenerative braking, and control circuitry.

The Paice technology, developed back in the 1990s, is called the Hyperdrive System and provides seamless switching between power from an electric motor and an internal combustion engine.

The accused products listed in the complaint are the VW Jetta Hybrid, the Audi Q5 Hybrid, the Audi A3 e-tron Hybrid, the Porsche S E-Hybrid, and the Porsche Panamera S E-Hybrid.

The Paice complaint requests a permanent limited exclusion order that would stop the allegedly infringing hybrid vehicles and components from entering the United States.

It remains to be seen whether Volkswagen, like the other automakers, will determine that it is in its best interest to take a license to Paice’s hybrid vehicle patents.

Clean Tech in Court: Green Patent Complaint Update

March 15th, 2016

A number of new patent infringement lawsuits were filed in January and February in the areas of electric vehicle charging, LEDS, smart grid, and solar battery phone cases.

 

Electric Vehicle Charging

Technology for Energy Corporation v. Hardy et al.

In a lawsuit against a former employee, Technology for Energy alleges various breach of contract claims, breach of an employment agreement, and requests a declaratory judgment of patent invalidity and unenforceability.  The complaint was filed February 22, 2016 in federal court in Knoxville, Tennessee.

The patent at issue is U.S. Patent No. 9,020,771, entitled “Devices and methods for testing the energy measurement accuracy, billing accuracy, functional performance and safety of electric vehicle charging stations” (‘771 Patent).

The ‘771 Patent is directed to an instrument for testing electric vehicle charging stations (EVCS).  Energy delivery from the EVCS to the load is monitored by the instrument to determine energy measurement and billing accuracy of the EVCS.

 

LEDs

Harvatek Corporation v. Cree, Inc.

This is the third lawsuit between these two LED makers involving white LED lighting technology (see previous posts here and here).

Filed January 26, 2016 in the U.S. District Court for the Central District of California, Harvatek’s complaint accuses Cree of infringing U.S. Patent No. 6,841,934 (‘934 Patent).

The ‘934 Patent is entitled “White light source from light emitting diode” and is directed to an LED white light source that emits short wavelength color light.  The LED has a split metal substrate and a fluorescent glue that covers the LED chip and converts the short wavelength color light into white light.

Harvatek alleges that Cree’s CLM1 Series LED products infringement the ‘934 Patent.

 

Lighting Science Group Corporation v. Sea Gull Lighting Products LLC et al.

Lighting Science Group Corporation v. Hyperikon, Inc.

Lighting Science Group Corporation v. U.S.A. Light & Electric, Inc.

Lighting Science Group (LSG) filed three patent infringement lawsuits in late February, all in federal court in Orlando.

The complaint against Sea Gull was filed February 25, 2016 and asserts U.S. Patent No. 8,201,968 (‘968 Patent) and U.S. Patent No. 8,967,844 (‘844 Patent).  The accused products are Sea Gull’s Traverse Collection and Traverse II Collection products.

The complaint against Hyperikon was filed February 26, 2016 and alleges that Hyperikon’s LED Downlight products infringe the ‘844 Patent and U.S. Patent No. 8,672,518 (‘518 Patent).

Also filed February 26, 2016, the complaint against U.S.A. Light & Electric asserts the ‘968, ‘844, and ‘518 Patents and alleges that the defendant’s Recessed LED Downlight products infringe the patents-in-suit.

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.

The ‘518 Patent and the’ 844 Patent are entitled “Low profile light and accessory kit for the same” and relate to LSG’s disc light LED devices.

 

Lexington Luminance LLC v. Samsung Electronics Co. et al.

In a complaint filed February 25, 2016 in federal court in Marshall, Texas, Lexington Luminance accused Samsung of infringing U.S. Patent No. 6,936,851 (‘851 Patent).

The ‘851 Patent is entitled “Semiconductor light-emitting device and method for manufacturing the same” and is directed to LEDs having textured districts on the substrate such that inclined layers guide extended defects to designated gettering centers in the trench region where the defects combine with each other.  This structure reduces the defect density of the LEDs.

The complaint lists a host of Samsung products including a number of Galaxy smartphones.

 

Smart Grid

Endeavor MeshTech, Inc. v. Rajant Corporation

Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) sued Rajant in the U.S. District Court for the Eastern District of Pennsylvania on January 4, 2016.

The complaint accuses Rajant of infringing three patents in a family – U.S. Patent Nos. 7,379,981 (‘981 Patent),  8,700,749 (‘749 Patent), and 8,855,019 (‘019 Patent), each entitled “Wireless communication enabled meter and network.”

The patents-in-suit relate to a self-configuring wireless network including a number of vnodes and VGATES.

The accused products and services include Rajant’s BreadCrumb Wireless Nodes, InstaMesh Networking Technology, CacheCrumb, and Mesh Antennas.

 

Dipl.-In. H. Horstmann GmbH v. Smart Grid Solutions, Inc.

Horstman, a German company, filed this lawsuit against Smart Grid Solutions (SGS) in federal court in Atlanta, Georgia.

Filed on January 12, 2016, the complaint accuses SGS of trade dress infringement and various deceptive trade practices, as well as infringement of U.S. Patent No. D578,478 (‘478 Patent), a design patent entitled “Fiber optic cable.”

The ‘478 Patent protects Horstmann’s fiber optic cable design with each end including a semi-transparent curved end attached to the cable and a ribbed segment terminating at a flange.

Horstman alleges that SGS’s E-Scout FI-3C Underground Fault Indicator product infringes the ‘478 Patent.

 

JSDQ Mesh Technologies LLC v. Teco Energy, Inc. et al.

On February 2, 2016, JSDQ filed suit against Teco Energy and Tampa Electric Company, alleging infringement of four patents relating to wireless routing systems used in smart grid networks.

The patents-in-suit are U.S. Patent Nos. 7,286,828 and 7,916,648, both entitled “Method of Call Routing and Connection,” RE43,675 entitled “Wireless Radio Routing System,” and RE44,607 entitled, “Wireless Mesh Routing Method.”

JSDQ alleges that Teco and Tampa Electric infringe the patents-in-suit because of their deployment of wireless mesh networking systems that incorporate Trilliant’s SecureMesh broadband mesh network.

JSDQ filed a similar infringement suit against Silver Spring and Pepco in September last year.

 

Solar Battery Phone Cases

iPowerUp Inc. v. Ascent Solar Technologies, Inc.

iPowerUp sued Ascent Solar Technologies (AST) for alleged infringement of two patents relating to solar battery charging cases for mobile phones.

The complaint was filed February 12, 2016 in the U.S. District Court for the Central District of California.

The asserted patents are U.S. Patent No. 8,080,975, entitled “Portable and universal hybrid-charging apparatus for portable electronic devices” (‘975 Patent) and U.S. Patent No. 8,604,753, entitled “Method of distributing to a user a remedy for inadequate battery life in a handheld device” (‘753 Patent).

The ‘975 Patent is directed to a modular hybrid-charger assembly comprising a rechargeable internal battery connected to a port operable to function as a tetherless connection to a portable electronic device and a device holder having a framework operable to receive, hold, and release the portable electronic device.  The ‘753 Patent claims methods relating to use of the hybrid-charger assembly of the ‘975 Patent.

The accused products are AST’s Enerplex Surfr and Enerplex Surfr Amp cases for the iPhone 6/6s and the Enerplex Surfr for iPhone 5/5s.

Paice Licenses Hybrid Vehicle Patents to More Big Automakers

February 2nd, 2016

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In another big success for Paice, the hybrid vehicle technology company recently reached an agreement to license all of its tech to Hyundai and Kia.

This comes after a Baltimore jury found that the Korean automakers owed Paice $28.9 million in damages for infringing three patents relating to hybrid electric vehicles: U.S. Patent Nos. 7,237,634, 7,104,347, and 7,559,388.  All three patents are entitled “Hybrid vehicles” .

Paice has been an extremely successful non-practicing entity, using patent litigation in the federal courts and the U.S. International Trade Commission to bring major automakers to the negotiating table.

In 2010 the company settled major patent litigation with Toyota over the Prius and other hybrid models when the Japanese automaker licensed all of Paice’s patents.  Also that year, Paice and Ford became embroiled in patent litigation over hybrid vehicles.

According to the company’s press release about the Kia/Hyundai deal:

Paice has now licensed all or part of its hybrid vehicle technology portfolio to Toyota, Hyundai/Kia, and Ford – three of the world’s six largest automakers.  These three companies currently account for 90% of all hybrid vehicle sales in the United States.

Does all this litigation and licensing make Paice one of the oft-maligned “patent trolls?”  I think not.

The company should not be put in that category for a couple of reasons.  First, the founder of the company and inventor of the technology, Alex Severinsky, is a true innovator and pioneer, having invented much of Paice’s technology at least as early if not earlier than the large automakers.

Most of the patent assertion entities we think of as trolls are not innovators, but instead buy patents to assert in litigation and offer to license.

Second, Paice made genuine efforts at ex ante licensing.  That is, the company approached Toyota with offers to license its technology before any hybrid vehicles were ever sold.

This is in contrast to the business model of acquiring and asserting patents, with licensing offers, after the allegedly infringing products have been manufactured and racked up lots of sales (ex post licensing).

Paice’s success is not a surprise when one understands the power of its patents.  A 2010 report by a patent analytics firm called Ambercite analyzed 58,000 hybrid car patents and their interrelationships using network patent analysis methodology and found Paice’s portfolio to be the strongest, better than all major car manufacturers’ hybrid car patents.

Clean Tech in Court: Green Patent Complaint Update

January 26th, 2016

A number of green patent complaints were filed in November and December of 2015 in the areas of LEDs, smart grid, and water treatment.

 

LEDs

Bluestone Innovations LLC v. Ace Hardware Corporation

Bluestone Innovations LLC v. Bulbrite Industries, Inc.

Bluestone Innovations LLC v. FEIT Electronic Co.

Bluestone Innovations LLC v. G7 Corporation

Bluestone Innovations LLC v. Ikea North America Services LLC

Bluestone Innovations LLC v. Lowe’s Companies, Inc.

Bluestone Innovations LLC v. Philips Electronics North America Corp.

Bluestone Innovations LLC v. Technical Consumer Products, Inc.

Bluestone Innovations LLC v. TigerDirect, Inc.

Bluestone Innovations LLC v. Torchstar Corp.

Bluestone Innovations LLC v. Ushio America, Inc.

Bluestone Innovations LLC v. Wayfair LLC

Bluestone Innovations LLC v. Westinghouse Lighting Corp.

Bluestone Innovations fired off thirteen complaints against a host of LED manufacturers and retailers on November 30, 2015.  All were filed in the U.S District Court for the Northern District of California (most, if not all, in San Francisco).

Some representative complaints can be viewed here:  Bluestone Innovations LLC v. Ace Hardware CorporationBluestone Innovations LLC v. Bulbrite Industries, Inc.Bluestone Innovations LLC v. FEIT Electronic Company, Inc.Bluestone Innovations LLC v. G7 Corporation

Bluestone asserted infringement of U.S. Patent No. 6,163,557 (‘557 Patent).  The ‘557 Patent is entitled “Fabrication of group III-V nitrides on mesas” and directed to group III-V nitride films fabricated on mesas patterned either on substrates such as sapphire substrates or on group III-V nitride layers grown on substrates. The mesas provide reduced area surfaces for epitaxially growing group III-V nitride films to reduce thermal film stresses in the films to minimize cracking.

The accused products are various brands and models of LED lightbulbs with group III-V nitride epitaxial films.

 

Smart Grid

Endeavor Meshtech, Inc. v. Firetide, Inc.

Endeavor Meshtech, Inc. v. Strix Systems, Inc.

Endeavor Meshtech, Inc. v. S&C Electric Company

Endeavor Meshtech, Inc. v. 3E Technologies Int’l, Inc.

Endeavor Meshtech, Inc. v. FluidMesh Networks LLC

Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) made a strong finish to a busy year of patent enforcement, filing five new lawsuits in November and December of 2015.

The suits against Firetide and Strix Systems were filed in the U.S. District Court for the Southern District of New York on November 23, 2015 (Endeavor Meshtech, Inc. v. Firetide, Inc.Endeavor Meshtech, Inc. v. Strix Systems, Inc.); the S&C Electric and FluidMesh Technologies complaints were filed in the U.S. District Court for the Northern District of Illinois on December 1 and December 28, 2015, respectively (Endeavor Meshtech, Inc. v. S&C Electric CompanyEndeavor Meshtech, Inc. v. Fluidmesh Networks, LLC); the lawsuit against 3E Technologies was filed in the U.S. District Court for the District of Maryland on December 23, 2015 (Endeavor Meshtech, Inc. v. 3E Technologies International, Inc.).

All of the complaints accuse the defendants of infringing three patents in a family – U.S. Patent Nos. 7,379,981 (‘981 Patent),  8,700,749 (‘749 Patent), and 8,855,019 (‘019 Patent), each entitled “Wireless communication enabled meter and network.”

The patents-in-suit relate to a self-configuring wireless network including a number of vnodes and VGATES.

 

Clean Energy Management Solutions, LLC v. Eaton Corp.

Clean Energy Management Solutions sued Eaton for alleged infringement of U.S. Patent Nos. 6,636,893 (‘893 Patent) and 6,577,962 (‘962 Patent).

The ‘893 Patent is entitled “Web bridged energy management system and method” and directed to systems and methods enabling individual energy management sites to be connected using a web bridge such that data from the individual sites can be accumulated to a single site, data from one site can be distributed to many sites, and a pyramid arrangement can be used.

The ‘962 Patent is entitled “System and method for forecasting energy usage load” and directed to systems and methods dynamic, real-time energy load forecasting for a site.

Filed December 16, 2015 in federal court in Marshall, Texas, the complaint alleges that Easton’s smart grid solutions such as the Yukon IED Manager Suite infringe the patents-in-suit.

 

Atlas IP, LLC v. City of Naperville

Atlas filed suit against the City of Naperville, Illinois, alleging that the municipality’s installation of REX2 residential smart meters supplied by Elster Metering infringes an Atlas smart meter patent.

The asserted patent, U.S. Patent No. 5,371,734, is entitled “Medium access control protocol for wireless network” and directed to a reliable medium access control protocol for wireless LAN-type network communications among a plurality of resources, such as portable computers.

The complaint was filed in the U.S. District Court for the Northern District of Illinois on November 30, 2015.

 

Water Treatment

America Greener Technologies, Inc. et al. v. Enhanced Life Water Solutions, LLC et al.

In a complaint filed December 8, 2015 in the U.S. District Court for the District of Arizona, America Greener Technologies (AGT) sued a number of companies and individuals for alleged infringement of a patent relating to a water treatment device and process.

The asserted patent is U.S. Patent No. 8,477,003, entitled “Apparatus for generating a multi-vibrational field” (‘003 Patent).  The ‘003 Patent is directed to an apparatus and method for generating multi-vibrational electromagnetic (MVEM) fields for use in many water treatment applications, including eliminating calcium build-up, reducing salt usage, increasing water clarity, restructuring or inhibiting nitrates, and restructuring or inhibiting calcium salts and other minerals.

AGT alleges that, after selling the patent to AGT, one of the inventors/co-defendants manufactured a patented device and has been leasing, selling or renting the device.

 

Veolia Water Solutions & Technology Support v. WesTech Engineering, Inc.

Veolia sued WesTech in the U.S. District Court for the Eastern District of North Carolina, asserting U.S. Patent No. 8,961,785 (‘785 Patent).

The ‘785 Patent is entitled “Rotary disc filter and module for constructing same” and directed to a rotary disc filter device including a rotary drum and disc-shaped filter members secured about the drum.

Filed November 13, 2015, Veolia’s complaint alleges that WesTech’s SuperDisc disc filter infringes the ‘785 Patent.

Clean Tech in Court: Green Patent Complaint Update

November 19th, 2015

Several new green patent complaints were filed in September and October in the areas of LEDs, smart grid, smart meters and wastewater handling.

 

Smart Grid

JSDQ Mesh Technologies LLC v. Silver Springs, Inc. and Pepco Holdings, Inc.

JSDQ filed a patent infringement lawsuit on September 10, 2015 in the U.S. District Court for the District of Delaware.

This complaint accuses Silver Springs and Pepco of infringing three U.S. Patents Nos. 7,286,828 entitled “Method of Call Routing and Connection,” RE43,675 entitled “Wireless Radio Routing System,” and RE44,607 entitled, “Wireless Mesh Routing Method.”

The technology involved in the suit includes Silver Springs’ Smart Grid Mesh Network solutions, which the complaint alleges includes a wireless routing system and an Aerohive routing system used in conjunction with directional radio signals.

The complaint alleges Pepco is infringing the patents through its use of Silver Springs’ Smart Grid Mesh Network and associated products and services.

 

Smart Meters

 Transdata, Inc. v. Landis+Gyr, Inc. and Landis+Gyr Technology, Inc.

Transdata, Inc. v. Itron, Inc.

Transdata, Inc. v. General Electric Company and GE Energy Management Services, Inc.

On September 11, 2015, TransData filed three separate complaints in federal court in Tyler, Texas.

Each of the three complaints corresponds to a different defendant(s) (see the complaints here, here, and here), but each complaint asserts the same three patents.  These complaints follow a long list of consolidated “smart meter” cases, and in each complaint, Transdata notes that the defendant(s) indemnified and/or defended other defendant(s) in the earlier consolidated cases.

Two of the asserted patents, U.S. Patent Nos. 6,181,294 (‘294 Patent)and 6,462,713 (‘713 Patent) are related and entitled “Antenna for Electric Meter and Manufacture Thereof.”  The third patent, U.S. Patent No. 6,903,699, entitled “Wireless Communication Device for Electric Meter and Method of Manufacture Thereof,” is a continuation-in-part of ‘713 and continuation of ‘294.

These patents describe an electric meter capable of bi-directional communication over a wireless network.  The meter is equipped with wireless communication circuitry and an antenna allowing the meter to wirelessly send usage data to a remote location and wirelessly, receive operational instructions from the remote location.

For a more detailed discussion of the patented meter technology and discussion of earlier case, see our previous post here.

Numerous industrial and residential electric meters made by the defendants are at issue in these cases.

The Landis+Gyr products include residential meters containing the Landis+Gyr Gridstream RF Mesh Residential Endpoint; industrial and commercial meters containing Landis+Gyr Gridstream RF Mesh Commercial  and Industrial Endpoint; and meters with the AMI communication modules and antenna.

The Itron and General Electric meters include various residential and industrial meters equipped with under-the-glass wireless communication modules and meters with the AMI communication modules and antenna.

 

LEDs

Global Tech LED, LLC. V. Every Watt Matters, LLC and DRK Enterprises, Inc.

Global Tech LED, LLC V. Hilumnz International Corp., Hilumnz, LLC and Hilumnz USA, LLC

Global Tech LED filed a complaint against Every Watt Matters and DRK (“EWM”) on September 14, 2015 and a complaint against Hilumnz on September 15, 2015.

Both complaints were filed in the U.S. District Court for the Southern District of Florida and allege the defendant(s) infringed U.S. Patent No. 9,091,424, entitled “LED Light Bulb.”

The patent pertains to an LED device that can replace or retrofit a light bulb in an electrical socket.  The LED device has a screw connector for screwing into a light bulb socket.  A bracket connects the screw portion to the housing, which holds one or more LEDs.  The housing can rotate to direct the light from the LED and contains an electrically powered cooling fan to dissipate heat generated by LED.

Both complaints allege EWM and Hilumnz offer for sale infringing LED lamp products.  The Hilumnz complaint also alleges that Hilumnz offers for sale various Retrofit Kits.

 

Wastewater Handling

Liberty Pumps Inc. v. Franklin Electric Co., Inc.

On October 23, 2015, Liberty Pumps Inc. (“Liberty”) filed a complaint in the U.S. District Court for the Western District of New York.  The complaint alleges Franklin Electric Co. Inc. (Franklin) is infringing U.S. Patent Nos. 8,523,532 (‘532 Patent) and 8,888,465 (‘465 Patent) entitled, “Sewage Handling System, Cover and Controls.”

The ‘532 and ‘465 Patents describe a basin/pump assembly for moving liquids such as sewage.  If a bathroom is lower than a household sewer effluent pipe, this assembly would pump the bathroom wastewater to the level of sewer effluent pipe.

The assembly has a basin with a bottom, sides and a hanging feature formed into the basin.  The hanging feature has a hanging portion with a level switch.  A pump is disposed in the basin.  Also, the basin may have a cover assembly that can be fastened to the open top of the basin.

The accused products include Franklin’s LittleGIANT Pit+Plus Sewage Basin.

 

Jayne Saydah is a registered patent attorney with experience prosecuting patent applications for a broad range of technologies.  She has a B.S. in Environmental Engineering and an interest in protecting the intellectual property rights of any environmentally conscience inventions and businesses.

Supremes’ Alice Ruling Drowns Water Treatment Patent

November 10th, 2015

A Green Patent Complaint Update post reported on the patent infringement suit between Neochloris and Emerson Process Management Power & Water Solutions.  Citgo was also named as a defendant.

In the lawsuit, Neochloris accused Emerson and Citgo of infringing U.S. Patent No. 6,845,336 (‘336 Patent).

The ‘336 Patent is entitled “Water treatment monitoring system” and directed to a monitoring system to receive data from water sensors, analyze water quality conditions inputted by the sensors and predict effluent water quality and process upsets.  The monitoring system includes an artificial neural network module to determine solutions to actual and potential water quality and process upsets.

The defendants jointly moved for summary judgment that the ‘336 Patent is invalid because it covers non-patentable subject matter under 35 U.S.C. § 101.  Section 101 of U.S. patent law delineates the broad categories of subject matter deemed eligible for patent protection.

These comprise “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”

Generally excluded from eligibility are laws of nature, natural phenomena, and abstract ideas.  Patentable subject matter has been in flux for the last several years and recent case law has rendered previously eligible areas such as business methods and software very difficult to patent.

In a recent decision, Judge Edmond E. Chang of the U.S. District Court for the Northern District of Illinois granted the summary judgment motion, ruling that the ‘336 Patent protects an unpatentable abstract idea.

The court’s decision began with a summary of the asserted claims of the ‘336 Patent, stating that they describe a method for:

  1. collecting data at a water treatment plant;
  2. sending the data over an internet connection to a computer;
  3. monitoring and analyzing the data with an ordinary computer and software; and
  4. alerting the facility of any abnormalities.

The U.S. Supreme Court’s 2014 Alice v. CLS Bank decision laid out the current analysis for determining patentable subject matter under Section 101.  The first question is whether the claims are “directed to a patent ineligible concept” on their face.  If so, the second question is whether the claims nonetheless contain an “inventive concept” that can make the concept a patent eligible invention.

Judge Chang concluded that the claims of the ‘336 Patent cover an abstract idea:

[A]t bottom, the claims cover the general process of observing, analyzing, monitoring, and alerting that can be done entirely by the human mind and by using pen and paper….the Federal Circuit has determined that collecting and processing data is an abstract idea.

The court went on to find that the claims do not contain any inventive concept.  Neochloris argued that the claims have three patent-eligible inventive features:  the use of computers and software, the ability to predict future failure events, and the ability to reduce human error.

However, the court found all of these functions to be conventional and that the claims of the ‘336 Patent merely recite basic computer functions:

[T]he ‘336 patent employs any “monitoring computer” and any “software” to perform basic computer functions.  The computer and software simply make routine calculations to monitor and analyze water data.  The claims are not limited to any particular software or hardware, and this generic technology has no special capabilities that “improve the functioning of the computer itself” or “effect an improvement in any other technology or technical field.”  Because the addition of a computer and software in the ‘336 patent “does no more than require a generic computer to perform generic computer functions,” this generic technology does not save the ‘336 patent.

Similarly, the ability of the patented system to predict future failure events, even if it is better than could be done by a human operator, is not inventive:

There is no inventive concept when a computer just replicates what a person can do, only more quickly and accurately.

Finally, the court found that reducing human error “only describes the generic ability of a computer to work more accurately and does not make the claim inventive.”

With software so integral to so many environmental and other green technologies, this surely is not the last we’ll see of Alice impacting green patents.

Big Win for Paice as Jury Finds Hyundai and Kia Owe $28.9 Million

October 20th, 2015

l_paice

Back in 2012, hybrid vechicle technology company Paice filed a lawsuit against Hyundai and Kia in federal court in Baltimore accusing the Korean automakers of infringing three of its patents.

The patents-in-suit were U.S. Patent Nos. 7,237,634, 7,104,347, and 7,559,388.  All three patents are entitled “Hybrid vehicles” and cover hybrid electric vehicles utilizing an internal combustion engine with series parallel electric motors, regenerative braking, and control circuitry.

The Paice technology is called the Hyperdrive System and provides seamless switching between power from an electric motor and an internal combustion engine.

Recently, a Maryland federal jury returned a big verdict for Paice, deciding that Hyundai and Kia owe $28.9 million in damages for patent infringement.  The jury found that all of the asserted claims of the patents were valid and willfully infringed (see the report here on Autoblog and by Bloomberg news here).

The trial lasted eight days, but the jury needed just one day of deliberations to reach a verdict.

According to Paice’s press release, the $28.9 million sum represents a payment of $200 for each infringing hybrid vehicle sold by the defendants through June 30, 2015.  The cars at issue were the Hyundai Sonata Hybrid and the Kia Optima Hybrid.

Paice has successfully enforced its patents before, most notably licensing its hybrid technology to Toyota, which signed a global licensing deal in 2010 covering all of Paice’s technology.

Hyundai and Kia are likely to appeal the decision.

Clean Tech in Court: Green Patent Complaint (and Settlement) Update

September 22nd, 2015

Several new green patent complaints were filed in July and August in the areas of LEDs, smart grid, and water meters.

But before we get to that, a significant green patent case settled during this period.  Colorado-based Gevo and BP-DuPont joint venture Butamax announced that they entered into worldwide patent cross-license and settlement agreements.

The deal ends a massive patent dispute that began back in early 2011 and grew to comprise at least 17 lawsuits and 14 patents relating to methods of producing biobutanol.

The agreement grants both parties patent licenses to all fields for isobutanol and includes a combination of royalty-bearing and royalty-free fields for both parties.  According to this piece from Biofuels Digest, it seems the core of the deal is that Butamax will take the lead in the on-road gasoline market and Gevo gets the jet fuel market.

The litigation was notable both for its size and as the first foray of big oil into biofuels patent lawsuits.

 

LEDs

Feit Electric Company, Inc. v. Cree, Inc.

After Cree sued Feit for alleged infringement of 10 patents back in January, Feit fired back with this lawsuit filed July 7, 2015 in U.S. District Court for the Middle District of North Carolina.

The complaint accuses Cree of infringing two related U.S. Patent Nos. 8,408,748 and 9,016,901, both entitled “LED lamp replacement of low power incandescent lamp” (LED Lamp Patents).

The LED Lamp Patents are directed to LED light bulbs for replacing incandescents.  The LED lamp has an elevated light source positioned above a screw-type base and two groups of LEDs connected in series with each LED mounted proximate a heat sink.

The accused products are Cree’s 4Flow LED lamps.

 

Koninklijke Philips N.V. et al. v. Amerlux LLC et al.

Philips has filed another patent infringement lawsuit, asserting six LED lighting patents against New Jersey lighting company Amerlux.  The complaint was filed August 5, 2015 in the U.S. District Court for the District of Massachusetts.

The patents-in-suit are:

U.S. Patent No. 6,094,014, entitled “Circuit arrangement, and signaling light provided with the circuit arrangement”

U.S. Patent No. 6,250,774, entitled “Luminaire”

U.S. Patent No. 6,577,512, entitled “Power supply for LEDs”

U.S. Patent No. 7,038,399, entitled “Methods and apparatus for providing power to lighting devices”

U.S. Patent No. 7,262,559, entitled “LEDs driver”

U.S. Patent No. 8,220,958, entitled “Light-beam shaper”

Philips alleges that a host of Amerlux products infringe one or more of the asserted patents, including accent display lighting products, task lighting products, wall wash and grazer lighting products, shelf lighting products, downlights, pendants, outdoor lighting products, and other luminaire-type lighting products.

 

Smart Grid

Endeavor MeshTech, Inc. v. Redpine Signals, Inc.

Endeavor MeshTech, Inc. v. Atmel Corporation

Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) continued its patent enforcement campaign, filing two more lawsuits in July and August.

The first was filed against Redpine in U.S. District Court for the Southern District of New York on July 1, 2015 (Endeavor Meshtech v. Redpine), the second against Atmel in U.S. District Court for the District of Colorado on July 6, 2015 (Endeavor Meshtech v. ATMEL).

The two complaints accuse Redpine and Atmel, respectively, of infringing three patents in a family – U.S. Patent Nos. 7,379,981 (‘981 Patent),  8,700,749 (‘749 Patent), and 8,855,019 (‘019 Patent), each entitled “Wireless communication enabled meter and network.”

The patents-in-suit relate to a self-configuring wireless network including a number of vnodes and VGATES.

The accused products are Redpine’s n-Link, Connect-io-n, WiSeConnect, M2MCombo, SmartCombo, NetCombo and WinergyNet products and Atmel’s products sold under the brand names ZigBit, SmartConnect, BitCloud, and SMART.

 

Regen Energy Inc. v. eCurv Inc. 

On August 19, 2015 Regen Energy, a Canadian corporation with operations in San Marcos, California, sued Massachusetts-based eCurv for alleged infringement of U.S. Patent Nos. 8,918,223 (‘223 Patent) and 9,110,647 (‘647 Patent).

The ‘223 and ‘647 Patents are related patents entitled, respectively “Apparatus for managing an energy consuming load” and “Method and apparatus for managing an energy consuming load.”  They are directed to energy management systems and methods that generate load state data from energy consuming loads, make enablement state decisions for the loads using the load state data, and implement the enablement state decisions.

Filed in U.S. District Court for the Southern District of California, the complaint alleges that eCurv’s QPAC line of energy management software and related products infringe the ‘223 and ‘647 Patents.

 

Water Meters

Green4All Energy Solutions, Inc. v. Flow Dynamics, LLC et al.

In this action for tortious interference, unfair competition and declaratory judgment, Chicago-based Green4All requests that the court declare Flow Dynamics’ U.S. Patent No. 8,707,981 (‘981 Patent) invalid.

The ‘981 Patent is entitled “System for increasing the efficiency of a water meter” and directed to a valve assembly that increases the efficiency of an upstream water meter by removing entrained water bubbles from the water supply.

Filed August 5, 2015 in U.S. District Court for the Northern District of Illinois, the complaint alleges that Flow Dynamics’ prior filed patent infringement suit against Green4All (reported here) is without merit and the ‘981 Patent should be declared not infringed and invalid.

Guest Post: UK Court Invalidates Enercon Patent, But is this the End?

September 15th, 2015

A decision by the High Court of Justice in the UK has handed Enercon a blow in the enforcement of their patent related to power ramp down after the cut out wind speed (EP0847496).

Enercon first filed their patent in 1995 in Germany and has been commercially offering their ‘Storm Control’ technology on their own turbines for many years since. An image representing the power output control strategy is taken from the Enercon patent.

Totaro FIG. 1

In invalidating the Enercon patent, the UK court seems to have taken an interesting interpretation of a paper from E.A. Bossanyi published in 1982 which dealt with an evaluation of performance the Boeing built MOD-2 wind turbine which was contracted by NASA and erected in 1980. Essentially, the Bossanyi paper contemplates a method for power ramp-down specially adapted to the variable speed, constant frequency (VSCF) MOD-2 wind turbine.

Siemens relied upon expert testimony in arguing that this approach could be applied to variable speed, variable pitch (VSVP) machines being developed around the time of the Enercon patent filing. The UK court agreed.

Totaro FIG. 1

Siemens also referenced a 1980 patent filing by Toshiba in their attempt to invalidate the Enercon patent. The Toshiba patent describes technology which ramps down after the ‘conventional’ cut-out wind speed, but does not ramp all the way down to null output power. Nevertheless, the UK court did not favor the Siemens interpretation of the Toshiba patent that it teaches what Enercon claimed in their own very similar patent.

totaro fig. 3

Open Opposition

Interestingly, Vestas had previously filed an opposition against the European version of the Enercon patent in a timeframe that would have allowed them to present new prior art. However, their opposition was rejected in November 2002 without citing either the Toshiba patent or the Bossanyi paper.

Nevertheless, a new opposition period against the Enercon patent filing was made possible as of January 2015 based upon an amendment to the Enercon patent triggered by the UK court matter. The prior art references and precedent set in the UK will likely influence a decision by the European Patent Office (EPO) on the validity of the Enercon patent.

However, invalidity of the European patent is not for certain and Enercon still has the opportunity to appeal the UK ruling. The European Patent Office does not have to accept the same conclusion as the UK court, so it will be very noteworthy if the European Patent Office takes the same approach regarding the Bossanyi reference in their review of the amended Enercon patent.

Since Enercon is likely to appeal the UK ruling, the Siemens matter is far from over yet.

Gamesa Litigation

This European patent filing from Enercon serves as the parent to both the UK as well as the Spanish patent which is the subject of the ongoing litigation with Gamesa. The precedent set in the UK is likely to have repercussions on the litigation in Spain if the UK court position on invalidity holds.

An invalidation of the European patent would likely negate the damage award against Gamesa in Spain, but there is still potentially room for Enercon to argue their position here, so the outcome is not guaranteed for anyone involved either.

In the meantime, Gamesa should at least be able to leverage off the non-infringement arguments in their appeal in the Spanish court.

New Precedent

The UK court potentially establishes another interesting precedent here, because there are certainly other patents held by companies in the wind industry which attempt to deal with component loading and fatigue which could also potentially be argued as obvious in light of the UK court’s interpretation of the technology developed for VSCF being applicable to VSVP based turbines.

The UK court judge refers to adjustment of the torque and pitch control “knobs” as a means to control generator rotor rpm as an obvious method in light of the Bossanyi paper, but also acknowledges other methods of implementing such technology:

…it required no inventive activity at all for a skilled person given Bossanyi in 1995 to think seriously about how to implement the power ramp down proposal in VSVP turbines.  They would consider how to put that into practice and, in terms of controls, it was obvious to think about “turning” the electric torque “knob” and the pitch control “knob”.  Reducing rotor speed as the wind speed increased as a way of reducing power accordingly is not the only way of putting Bossanyi into practice but it is an obvious approach.  Reducing the speed this way has an obvious advantage in terms of loading and fatigue.

Final Thoughts

Over the past 10 years we have seen Enercon attempt to enforce patents on frequency and voltage regulation against Vestas unsuccessfully, with the result being an invalidation in Ireland and the UK. We have also seen MHI successfully challenge the validity of the GE zero voltage ride-through patent in the US leading to an overturning of the $169M judgement and a settlement of their other ongoing litigation matters.

The past history of the wind industry’s capitulation to licenses is likely at an end as companies arm themselves with information to defend against the onslaught of IP challenges they face. This new level of intelligence gained as well as a better understanding of the commercial implications of IP infringement risks are providing companies with the opportunity to invalidate competitor patents with greater rigor and frequency than ever before in the industry’s history.

The implications of all these proceedings introduces some potentially substantial commercial risks into the project development process. Now that companies are willing to target the turbine OEMs, project developers and even the EPC contractors for patent infringement liability, the proactive companies are already arming themselves with information to ensure they can proceed smoothly.

 

*Philip Totaro is the CEO of Totaro & Associates, a consulting firm focused on innovation strategy, competitive intelligence, product development and patent search.  To find out more, or get in touch please visit www.totaro-associates.com.  Totaro & Associates delivers Innovative Solutions Enabled by Intelligence™.

Clean Tech in Court: Green Patent Complaint Update

July 21st, 2015

Several new green patent complaints were filed in May and June in the areas of LEDs, smart grid, and solar power including solar mounting systems and solar powered lanterns.

 

LEDs

Koninklijke Philips N.V. v. iGuzzini Lighting USA, Ltd. et al.

On May 22, 2015, Philips sued iGuzzini for infringement of five patents relating to LEDs and LED lighting devices.  The complaint was filed in the U.S. District Court for the District of New York.  The patents-in-suit are:

U.S. Patent No. 6,094,014, entitled “Circuit arrangement, and signaling light provided with the circuit arrangement”

U.S. Patent No. 6,250,774, entitled “Luminaire”

U.S. Patent No. 6,577,512, entitled “Power supply for LEDs”

U.S. Patent No. 6,586,890, entitled “LED driver circuit with PWM output”

U.S. Patent No. 7,802,902, entitled “LED lighting fixtures”

The accused products are iGuzzini’s Laser Blade, Primopiano-LED, Woody LED, and Palco LED lines.

 

Lynk Labs, Inc. v. Juno Lighting LLC et al.

Illinois-based Lynk Labs recently sued Juno Lighting for patent infringement, correction of inventorship, and breach of contract.

Filed in U.S. District Court for the Northern District of Illinois, the complaint alleges infringement of U.S. Patent Nos. 8,531,118, entitled “AC light emitting diode and AC LED drive methods and apparatus”(‘118 Patent) and 8,841,855, entitled “LED circuits and assemblies” (‘855 Patent).

Lynk Labs also has requested that the court correct the inventorship of Juno’s U.S. Patent No. 7,909,499, entitled “LED track lighting module” and U.S. Design Patent No. D579,144, entitled “L.E.D. light source cover” to include one or more officers or employees of Lynk Labs as co-inventors.

Finally, Lynk Labs alleges that Juno breached a 2006 Non-disclosure Agreement between the parties.

 

Smart Grid

Endeavor MeshTech, Inc. v. Nexgrid, LLC

Endeavor MeshTech, Inc. v. Freewave Technologies, Inc.

Endeavor MeshTech, Inc. v. Zenner Performance Meters, Inc.

Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) continued its patent enforcement campaign, filing three more lawsuits in May and June.

The first was filed against Nexgrid in federal court in Richmond, Virginia on May 5, 2015 (Endeavor Meshtech v. Nexgrid), the second against Freewave Technologies in the U.S. District Court for the District of Colorado on June 16, 2015 (Endeavor Meshtech v. Freewave), and the third against Zenner Performance Meters in federal court in Marshall, Texas on June 23, 2015 (Endeavor Meshtech v. Zenner).

The first two complaints accuse each Nexgrid and Freewave, respectively, of infringing three patents in a family – U.S. Patent Nos. 7,379,981 (‘981 Patent),  8,700,749 (‘749 Patent), and 8,855,019 (‘019 Patent), each entitled “Wireless communication enabled meter and network.”  The complaint against Zenner asserts only the ‘749 and ‘019 Patents.

The patents-in-suit relate to a self-configuring wireless network including a number of vnodes and VGATES.

The accused products and services are Nexgrid products sold under the Nexgrid Technology Solutions brand name, Freewave’s Comprehensive High-Speed Wireless M2M Communications Solution sold under the WavePoint brand name, and Zenner’s Stealth and MeshPlus branded products and services.

 

Solar Power

D Three Enterprises, LLC v. Sunmodo Corporation

D Three Enterprises, LLC v. Rillito River Solar LLC

On June 2, 2015 D Three filed two patent infringement suits in the U.S. District Court for the District of Colorado.

In the first (D Three Enterprises v. Sunmodo), D Three accuses Sunmodo of infringing U.S. Patent Nos. 8,689,517 (‘517 Patent) and 8,707,655 (‘655 Patent), both relating to involving sealing assemblies for roof-mounted solar panels.

The ‘517 and ‘655 Patents are related patents, each entitled “Roof mount sealing assembly” and directed to roof mount sealing assemblies that allow a user to mount rails for solar panels, signs, satellite dish or any other desired item on the roof and have the mounting location sealed against water.

The accused Sunmodo products are the EZ Mount assembly with Standoff for Shingle Roofs and the EZ Mount L-Foot Kit for Shingle Roofs.

The D Three complaint against Rillito asserts only the ‘517 Patent and alleges that Rillito’s (dba EcoFasten Solar) QuikFoot Roof Mount System with P-3-CSK Compression Post infringes the patent.

 

Allsop, Inc. v. Jetmax Ltd.

Allsop, a manufacturer of various consumer products including collapsible solar power lanterns, sued Hong Kong-based Jetmax for infringement of U.S. Patent No. 8,657,461 (‘461 Patent).

The ‘461 Patent is entitled “Solar-powered collapsible lighting apparatus” and directed to a solar-powered lighting apparatus having a light transmissible spherical shade coupled to a housing that receives a solar cell, a battery and at least a portion of a lighting element assembly.

Filed May 29, 2015 in federal court in Seattle, Washington, the complaint alleges that Jetmax’s Nylon Solar Hanging Lantern infringes the ‘461 Patent.