Archive for the ‘IP Litigation’ category

Trade Secrets Lit Updates: Sinovel Challenges Summons Service and Philips Computer Fraud Claim Fails

April 29th, 2015

There are updates on a couple of green tech trade secrets cases, each involving allegations of misappropriation by Chinese companies and their employees.

First, as discussed in a previous post, the ongoing litigation between American Superconductor (AMSC) and Sinovel includes a criminal indictment against the Chinese wind turbine maker, two of its employees, and a former AMSC employee.

The defendants are charged with conspiracy to commit trade secret theft and criminal copyright infringement.  The technology involved is AMSC’s source code, software, equipment designs and technical drawings that relate to regulating the flow of electricity from wind turbines to the electricity grid

In a recent oral argument, Sinovel asked the U.S. Court of Appeals for the Seventh Circuit to reverse a lower court ruling and quash a summons, arguing it was improperly served on its U.S. subsidiary.  An article about the oral argument can be found here.

The second is a lawsuit brought by Koninklijke Philips and Philips Lumileds against Chinese competitor Elec-Tech International (ETI), several ETI subsidiaries, two corporate directors, and a former Lumileds employee named Dr. Gangyi Chen.  Philips alleged theft of trade secrets relating to high-energy LED lighting technology.

Elec-Tech moved to dismiss the complaint for a number of reasons, including an inadequately pleaded claim under the Computer Fraud and Abuse Act (CFAA), the only federal cause of action in the case.

In a recent decision, a federal court in San Jose, California dismissed Philips’ case, holding that the federal law claim under the CFAA could not be sustained.

The CFAA prohibits various computer crimes related to accessing computers without authorization in order to obtain information or data.  The problem for Philips was that Dr. Chen, who was alleged to have stolen the trade secret information, was authorized to access the Philips Lumileds network and did not exceed his authorized access while downloading the information prior to his resignation.

Specifically, the complaint was deficient because it lacked any allegation that someone without authorization accessed the confidential information:

By the Complaint’s own allegations, none of the CFAA Defendants accessed Lumileds’ information – Dr. Chen did, at a time when he was authorized to download this information.

While Dr. Chen may have misappropriated the information (a state law claim) and given it to the CFAA Defendants, the court held there is no “claim against those Defendants under the CFAA because they themselves did not hack Lumileds’ system.”

The court rejected Philips’ argument that Dr. Chen was an “agent” of the CFAA Defendants and they should be held liable based on their indirect, unauthorized access through Dr. Chen’s access, holding that the CFAA Defendants lack of access was fatal to the claim:

None of the CFAA Defendants entered or used Lumileds’ network.  At most, they encouraged Dr. Chen to do so, and stood to benefit from alleged misappropriation.  This action may give rise to a number of claims, but it does not support a theory of liability under the CFAA.

Expect this case to start up again in state court.

BASF Brings Battery Battle to the Border

April 14th, 2015

A previous post reported that chemical giant BASF and UChicago Argonne LLC (Argonne) sued Belgium-based Umicore and Japan-based Makita Corporation for infringement of two patents relating to cathode materials for lithium-ion batteries.  That lawsuit was filed February 20, 2015 in the U.S. District Court for the District of Delaware.

The same day BASF and Argonne filed a complaint in the U.S. International Trade Commisson (ITC) asking the ITC to investigate whether Umicore, Makita and their U.S. subsidiaries have imported and sold in the United States lithium ion cathode materials and batteries that infringe the same patents.

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.  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.

The patents-in-suit are U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent), both entitled “Lithium metal oxide electrodes for lithium cells and batteries” and directed to a lithium metal oxide positive electrode for a non-aqueous lithium cell.

The cell is prepared in its initial discharged state and has a general formula xLiMO2.(1−x)Li2M′Oin which 0<x<1, and where M is one or more ion with an average trivalent oxidation state and with at least one ion being Mn or Ni, and where M′ is one or more ion with an average tetravalent oxidation state.

According to the ITC complaint, Argonne is the owner of the ’082 and ’143 patents and BASF produces lithium ion cathode materials under an exclusive license to the patents.

Recently, the ITC issued a Notice announcing that it would investigate BASF’s and Argonne’s claims of infringement.

BASF and Argonne have requested a limited exclusion order that would prevent Umicore and Makita from importing Umicore’s cathode materials, allegedly marketed and sold under the Cellcore product group, and certain Makita power tools using lithium ion batteries.

Although Umicore and Makita are now squeezed in both the ITC and federal court, they may ask the court to stay the parallel court action in view of the ITC investigation.

Big Win for Butamax as PTAB Knocks Out All Claims of Gevo Patent

April 6th, 2015

Previous posts (e.g., here and here) discussed various threads of the major biofuels patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo.

A relatively new mechanism for challenging the validity of a U.S. patent is inter partes review (IPR), an administrative trial proceeding before the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) in which a third party can challenge the validity of a patent based on printed prior art publications.

Last year Butamax filed a petition with the PTAB for IPR of Gevo’s U.S. Patent No. 8,546,627 (’627 Patent).  The ’627 Patent is entitled “Renewable compositions” and directed to processes for preparing a renewable jet fuel.

The claimed processes comprise fermenting biomass with a microorganism, dehydrating the resulting alcohol to form biofuel precursors, and then subjecting the biofuel precursors to processes such as oligomerization, hydrogenation, and aromatization to form the fuel.

In a recent decision, the PTAB ruled that all 21 claims of the ’627 Patent are invalid in view of several prior art references cited by Butamax.

More particularly, the PTAB held that U.S. Patent Application Publication No. 2008/0132741 to D’Amore discloses five of the seven steps of independent claim 1 of the ’627 Patent.  Because the sixth and seventh steps of claim 1 are recited as optional, D’Amore was found to anticipate the claims.  D’Amore was also held to anticipate dependent claims 7, 11 and 14 of the ’627 Patent.

As the primary prior art reference, the PTAB applied D’Amore in combination with several other printed publications in holding all of the claims invalid.  The PTAB also considered ASTM D1655 jet fuel standards as an important secondary reference and found that D’Amore in combination with the standards rendered claims 2-7, 11, 14 and 18-21 obvious.

The PTAB found an additional ground for invalidity of independent claim 18 in International, or PCT, Patent Publication No. WO 2007/061903 to Bradin.  Bradin is entitled “Alternative fuel and fuel additive compositions” and directed to alternative gasoline, diesel fuel, marine diesel fuel, jet fuel, and flexible fuel compositions including an alcohol and/or a glycerol ether or mixture of glycerol ethers, which can be derived from renewable resources.

Clean Tech in Court: Green Patent Complaint Update

March 24th, 2015

In January and February, there were a number of green patent infringement lawsuits filed in the areas of biofuels, hybrid vehicles, LEDs, smart grid, advanced batteries, solar power, and water meters.

Advanced Batteries

BASF Corporation et al. v. Umicore N.V. et al.

In this lawsuit BASF and UChicago Argonne, LLC accuse Umicore and Makita Corporation of unfair trade practices, antitrust violations, and infringement of two patents relating to cathode materials for lithium-ion batteries.

The patents-in-suit are U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent), both entitled “Lithium metal oxide electrodes for lithium cells and batteries” and directed to a lithium metal oxide positive electrode for a non-aqueous lithium cell.

The cell is prepared in its initial discharged state and has a general formula xLiMO2.(1−x)Li2M′Oin which 0<x<1, and where M is one or more ion with an average trivalent oxidation state and with at least one ion being Mn or Ni, and where M′ is one or more ion with an average tetravalent oxidation state.

According to the complaint, Umicore is selling cathode materials that infringe the ’082 and ’143 Patents, and Makita is one of the companies importing and selling batteries incorporating the materials.  The lawsuit was filed February 20, 2015 in the U.S. District Court for the District of Delaware.

Biofuels

C T E Global, Inc. v. Novozymes A/S

In a complaint filed January 9, 2015 in the U.S. District Court for the Northern District of Illinois, C T E Global seeks a declaratory judgment of invalidity and non-infringement of two Novozymes patents relating to an enzyme used in biofuel production.  The patents are U.S. Patent Nos. 6,255,084 (’084 Patent) and 7,060,468 (’468 Patent).

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

Novozymes and C T E previously litigated these patents and settled the case in 2012.  According to C T E, the ’084 and ’468 Patents are invalid in light of the U.S. Supreme Court Myriad Genetics decision holding that isolated natural products are not patent eligible subject matter.

Superior Oil Company, Inc. v. Solenis Technologies L.P.

This is not a patent infringement suit, but rather a priority /ownership dispute in which Superior Oil claims that the inventors of its patent for a method for recovering oil from the byproducts of ethanol production using various surfactants were the first to invent the technology.

Superior Oil’s patent is U.S. Patent No. 8,962,059, entitled “Bio-based oil composition and method for producing the same” (’059 Patent).  In its complaint, Superior Oil requests that the court declare that an interference-in-fact exists between the ’059 Patent and U.S. Patent No. 8,841,469 (’469 Patent), entitled “Chemical additives and use thereof in stillage processing operations” and owned by Solenis Technologies.

The complaint was filed February 24, 2015 in the U.S. District Court for the District of Delaware.

Hybrid Vehicles

Somaltus LLC v. Ford Motor Company

Somaltus filed this complaint for patent infringement in the U.S. District Court for the Eastern District of Texas on February 12, 2015.  Somaltus alleges that Ford infringes U.S. Patent No. 7,657,386 (’386 Patent) by selling vehicles equipped with an infringing hybrid battery system.

The ’386 Patent is entitled “Integrated battery service system” and directed to an integrated battery service system that performs a plurality of services related to a battery, such as battery testing, battery charging, and the like. In addition, the integrated service system provides services to devices/components that are coupled to the battery, such as starters, alternators, etc.

Somaltus, a non-practicing entity, has also sued Nissan, Bosch Automotive Service Solutions, Auto Meter Products, and Cadex Electronics.

LEDs

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

North Carolina LED manufacturer Cree sued Feit for alleged infringement of ten utility and design patents relating to LED technologies.  The complaint also alleges that Feit has engaged in false advertising in connection with marketing its LED products.

The patents-in-suit are:

U.S. Patent No. 6,657,236, entitled “Enhanced light extraction in LEDs through the use of internal and external optical elements”

U.S. Patent No. 6,885,036, entitled “Scalable LED with improved current spreading structures”

U.S. Patent No. 6,614,056, entitled “Scalable led with improved current spreading structures”

U.S. Patent No. 7,312,474, entitled “Group III nitride based superlattice structures”

U.S. Patent No. 7,976,187, entitled “Uniform intensity LED lighting system”

U.S. Patent No. 8,766,298, entitled “Encapsulant profile for light emitting diodes”

U.S. Patent No. 8,596,819, entitled “Lighting device and method of lighting”

U.S. Patent No. 8,628,214, entitled “Lighting device and lighting method”

U.S. Design Patent No. D653,366, entitled “LED lamp”

U.S. Design Patent No. D660,990, entitled “LED lamp”

The complaint includes greenwashing allegations as well, specifically that Feit’s advertising falsely suggests that some of its LED products meet the Energy Star standard relating to Luminous Energy Distribution when the products actually fail to meet this requirement.

Smart Grid

Allure Energy, Inc. v. Honeywell International, Inc. 

On January 29, 2015, Allure Energy sued Honeywell in federal court in Austin, Texas, alleging false advertising and infringement of two patents relating to smart thermostat technology.

The complaint asserts U.S. Patent Nos. 8,626,344 and 8,457,797, both entitled “Energy management system and method” and directed to a wireless thermostat responsive to control action data communicated via a mobile app and other home energy management systems.

The accused device is Honeywell’s Lyric smart thermostat product.

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

Previous posts (e.g., here and here) reported on SIPCo’s patent enforcement activities.

In this declaratory judgment (DJ) action, filed January 30, 2015 in federal court in Atlanta, Emerson, one of the defendants in SIPCo’s patent infringement suits, seeks a declaratory judgment that the claims of two SIPCo patents are invalid and not infringed.

The patents listed in Emerson’s complaint are U.S. Patent No. 6,044,062, entitled “Wireless network gateway and method for providing same,” and directed to certain wireless network systems having a server providing a gateway between two networks, and U.S. Patent No. 7,103,511, which relates to remote monitoring and control systems.

In 2013, Emerson filed a similar DJ suit against SIPCo targeting several patents.

Solar Power

Beacon Power, LLC v. SolarEdge Technologies, Inc. et al.

Beacon Power sued SolarEdge for patent infringement on January 9, 2015 in federal court in San Antonio, Texas.  The complaint asserts U.S. Patent Nos. 8,102,144 (’144 Patent) and 8,669,675 (’675 Patent), each entitled “Power converter for a solar panel.”

The ’144 Patent is directed to a solar power generation system including a DC-to-DC power converter configured and arranged to convert the raw power output for each solar module to a high voltage and low current output.

The ’675 Patent is directed to a solar power generation system wherein each DC-to-DC power converter is configured and arranged to convert the solar module output power (SOP) for each solar module to a converted solar module output power (COP) having a converted output voltage (COV) that is higher than the SOV and a converted output current (COI) that is lower than the SOI.

The accused products are SolarEdge’s P Series Power Optimizers.

Water Meters

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

Filed February 20, 2015 in federal court in Palm Beach, Florida, Flow Dynamics’ complaint accuses Green4All of infringing U.S. Patent No. 8,707,981 (’981 Patent).

The ’981 Patent is entitled “System for increasing the efficiency of a water meter” and directed to a system and an associated valve assembly adapted to increase the efficiency of an upstream water meter. The valve assembly removes entrained water bubbles from the water supply, increasing the density of the water running through the water meter. This ensures that the water meter is not inaccurately including entrained air as metered water so water readings are more accurate.

Flow Dynamics alleges that Green4All’s H2minusO system infringes the ’981 Patent.

Gevo Gets Good GVR in Supreme Court Decision

February 24th, 2015

A previous post discussed one significant piece of the massive patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo.  The most recent prior thread of this case – which resembles a yo-yo in its narrative – was an appellate court win for Butamax.

Initially, the district court ruled for Gevo, granting its 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 then vacated both the grant of Gevo’s motion for summary judgement of non-infringement and the denial of Butamax’s motion for summary judgment.

Gevo petitioned to the U.S. Supreme Court to hear the case, and in a single, swift decision known as a GVR, the Supremes granted the petition, vacated the Federal Circuit decision, and remanded for further proceedings.  Grant-Vacate-Remand, hence GVR (read a blurb on the decision and GVR at the Patently-O blog here).

The Federal Circuit must now reconsider this case in light of the Supreme Court’s recent Teva Pharmaceuticals decision, which raised the standard for appellate review of district court factual determinations in patent claim construction rulings.

Previously, the Court of Appeals for the Federal Circuit used a “de novo” standard, which meant it could take a fresh look at the evidence on claim construction and make its own determination, which led to a high reversal rate.  After Teva, the Federal Circuit can reverse only where it finds “clear error” in the district court’s consideration of the facts in a claim construction decision.

So the yo-yo, in this thread of the patent war at least, swings back to Gevo with Butamax’s victory wiped out for the moment (see Gevo’s patent PR on the GVR decision here).

Clean Tech in Court: Green Patent Complaint Update

February 3rd, 2015

Several new green patent complaints were filed in late 2014 (late October, November, and December) in the areas of environmental remediation, LEDs, green dry cleaning solvents, and smart grid.

 

Environmental Remediation

Peroxychem LLC v. Innovative Environmental Technologies, Inc.

Peroxychem sued Innovative Environmental Technologies (IET) for patent infringement in the Eastern District of Pennsylvania.  Filed November 7, 2014, the complaint alleges that IET infringes U.S. Patent No. 7,785,038 (’038 Patent).

The ’038 Patent is entitled “Oxidation of organic compounds” and directed to methods and compositions for treating organic compounds present in soil and groundwater involving the use of a composition comprising a solid state, water soluble peroxygen compound and zero valent iron.

According to the complaint, IET’s activities at a site called Hexcel in Lodi, New Jersey infringe the ’038 Patent.

 

Neochloris, Inc. v. Emerson Process Management Power & Water Solutions, Inc. et al.

Filed December 3, 2014 in the U.S. District Court for the Northern District of Illinois, Neochloris’s complaint alleges that Emerson infringes 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.

According to the complaint, Emerson’s Delta V System infringes the ’336 Patent.

 

LEDs

Harvatek Corporation v. Cree, Inc.

Just weeks after Cree sued Harvatek for infringement of six patents relating to white light LED technology, Harvatek responded with a lawsuit of its own.  Harvatek filed a complaint December 5, 2014 in the Northern District of California, asserting one patent against Cree.

Entitled “Reflection-type light-emitting module with high heat-dissipating and high light-generating efficiency,” U.S. Patent No. 8,079,737 is directed to a reflection-type light-emitting module that includes a reflection-type lampshade unit with an open casing and a reflective structure formed on the open casing.

The accused products include the Cree LRP-28 series LED lamp.

 

Green Dry Cleaning Solvents

GreenEarth Cleaning, L.L.C. v. Personal Touch Valet Wholesale Bronx, Inc.

Kansas City-based GreenEarth Cleaning holds a number of patents directed to its environmentally friendly dry cleaning methods and solvents.  On December 23, 2014, GreenEarth sued Personal Touch Valet for alleged infringement of U.S. Patent No. 5,942,007 (’007 Patent).

The ’007 Patent is directed to methods and systems of dry cleaning articles comprising several steps including immersing the articles to be dry cleaned in a dry cleaning fluid including a cyclic siloxane composition.

The complaint, filed in the U.S. District Court for the Western District of Missouri, alleges that Personal Touch Valet is in breach of a license agreement with GreenEarth and is infringing the ’007 Patent and several other related patents.

GreenEarth previously sued Glyndon Laundry for patent and trademark infringement.

 

Smart Grid

Endeavor MeshTech, Inc. v. Leviton Manufacturing Co., Inc.

Endeavor MeshTech, Inc. v. Eaton Corporation

On October 31, 2014, Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) filed two more patent infringement complaints.  One was filed against Leviton Manufacturing in the U.S. District Court for the District of Delaware (Endeavor v. Leviton), and the other against Eaton in the Northern District of Ohio (Endeavor v. Eaton).

The complaints accuse each defendant of infringing three patents in a family – U.S. Patent Nos. 7,379,981  8,700,749, and 8,855,019, 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.

Law Firm Disqualified in Li-ion Battery Patent Suit

January 27th, 2015

Previous posts (here and here) discussed some of the patent enforcement activity by Celgard, a North Carolina company that manufactures specialty membranes and separators for lithium ion batteries.

Celgard has filed several lawsuits alleging infringement of U.S. Patent No. 6,432,586 (’586 Patent), including one against LG Chem.  The ’586 Patent is entitled “Separator for a high energy rechargeable lithium battery” and directed to a separator including a ceramic composite layer and a polyolefinic microporous layer.  The ceramic layer has a matrix material and is adapted to block dendrite growth and prevent electronic shorting.

Last month, the Court of Appeals for the Federal Circuit disqualified the Jones Day law firm from representing Celgard in the litigation due to a conflict of interest.  Jones Day was concurrently representing Apple in other matters when it entered the case on behalf of Celgard against LG Chem.

The problem was LG Chem is Apple’s Li-ion battery supplier.  The district court granted Celgard’s motion for a preliminary injunction against LG Chem, the case was appealed, and Apple intervened seeking to disqualify Jones Day.

In a 5-page opinion, the Federal Circuit ruled for Apple, finding that the duty of loyalty protects Apple from Jones Day continuing to represent Celgard.  This despite the fact that Apple was not a named party in the case:

This conclusion is not altered by the fact that Apple is not named as a defendant in this action.  The rules . . . make clear it is the total context, and not whether a party is named in a lawsuit, that controls whether the adversity is sufficient to warrant disqualification.

Here, the total context, which included both Apple’s potential problem with LG Chem as a supplier and Celgard as a putative licensor or supplier, compelled a conclusion that Jones Day’s representation of Celgard was adverse to Apple:

Apple faces not only the possibility of finding a new battery supplier, but also additional targeting by Celgard in an attempt to use the injunction issue as leverage in negotiating a business relationship.  Thus, in every relevant sense, Jones Day’s representation of Celgard is adverse to Apple’s interests.

The Patently-O blog discusses this case here and notes the danger this opinion may raise for law firms involved in patent infringement litigation.

In view of this decision, some of those firms might attempt to extend the scope of their already unenforceable advance conflict waivers, which I previously wrote about here.

The Top Green IP Stories of 2014

January 20th, 2015

Before we get into the new news, let’s take a quick look back at the top green IP stories of 2014.

 

5.  GE Wins Ownership of Key Wind Patent

In what was something of a sideshow, but with major implications for the main event, the Court of Appeals for the Federal Circuit effectively ended a dispute between GE and a former employee, Thomas Wilkins, over ownership of one of the patents involved in larger litigation with Mitsubishi.

After Wilkins brought a lawsuit to correct inventorship of U.S. Patent No. 6,921,985 (’985 Patent), Mitsubishi intervened in the suit.   The Federal Circuit ultimately ruled for GE because the document Wilkins argued demonstrated his conception of the invention did not disclose any elements of the claimed invention.

In fact, the court held, the document in question “does not even depict the key feature Wilkins claims to have invented, i.e., a UPS powering the wind turbine’s three controllers.”

 

4.  Tesla’s Chinese Trademark Troubles

Tesla’s eco-mark issues in China were resolved, renewed, and resolved again in 2014.  Early in the year, Tesla said it had obtained a court decision granting it the right to use the TESLA mark in China over a cybersquatter and prior registrant of the TESLA mark named Zhan Baosheng.

A few months later, Mr. Zhan sued Tesla for trademark infringement in China, demanding the American electric car maker stop all sales and marketing activities in China, shut down showrooms and charging facilities, and pay him 23.9 million yuan ($3.85 million) in compensation.

Shortly thereafter, Zhan apparently got his pay day when Tesla resolved the dispute – this time via a direct settlement rather than relying on the Chinese court system. Zhan agreed to settle the dispute “completely and amicably” including consenting to cancellation of his Tesla trademark registrations and applications.   He also agreed to transfer his domain names, including tesla.cn and teslamotors.cn to Tesla.

 

3.  GreenShift Loses Big in Ethanol Patent Case

2014 saw a major decision in the patent infringement litigation between GreenShift (with its New York subsidiary, GS Cleantech) and a host of ethanol producers across the midwestern United States over patented ethanol production processes.

After multiple actions were consolidated in the Southern District of Indiana and the claims of the key patent family were construed and re-construed, the court issued a sweeping 233-page decision ruling on all of the pending motions for summary judgment brought by the original parties to the suit.

GreenShift lost big, with the court making several rulings on infringement, all for defendants.  Worse yet for GreenShift, the court held three of the four patents in the key patent family invalid because of the company’s commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.

 

2.  Record Settlement Under Clean Air Act for Alleged Greenwashing

After their reputations took a beating in 2012 under a barrage of consumer class actions alleging false or misleading fuel efficiency claims, last year the Korean automakers entered into a record settlement with the U.S. government amid additional allegations of greenwashing.

The Environment and Natural Resources Division of the U.S. Department of Justice (DOJ) and the California Air Resources Board (CARB) sued Hyundai and Kia, alleging they sold over a million vehicles that did not meet the requirements of the Clean Air Act because the automakers used improper testing procedures and analysis and submitted faulty fuel economy data to the U.S. Environmental Protection Agency.

Hyundai and Kia quickly settled with the DOJ and CARB.  Under the settlement, the automakers did not have to admit the truth of the allegations but agreed to pay about $100 million, about $93.6 million to the DOJ and about $6.4 million to the CARB.  This is the largest penalty ever imposed under the Clean Air Act.

The car companies also forfeited 4.75 million greenhouse emission credits – earned for building vehicle emissions under the legal limit – which they had previously claimed and are estimated to be worth over $200 million.

 

1.  The Tesla-Patent Commons

The biggest green IP story of 2014 was Elon Musk’s announcement that Tesla would “donate” its entire patent portfolio.  Specifically, Musk’s post on the company blog said “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

In the wake of the announcement, more details emerged about Tesla’s patents and the technologies covered.  Reaction to the move was mixed, with some arguing it was a public relations stunt that would ultimately hurt Tesla.

In my post on the announcement, I wondered whether the temptation of exploiting Tesla’s technology would outweigh exclusivity concerns:

Ultimately, the impact of Musk’s decision may turn on to what extent other such players will be motivated to invest in manufacturing vehicles, batteries, etc. using Tesla’s patented and patent-pending technology with the obvious upside being the proven innovation that technology brings and the down side being no exclusivity, instead of investing in their own R&D and patent protection where the upside may be exclusivity and the down side may be inferior or unproven technologies.

Only time will tell what, if any, impact Tesla-Patent Commons will have on the electric vehicle market.

GreenShift Loses Across the Board in Ethanol Patent Case

December 14th, 2014

In a number of prior posts (e.g., here, here and here), I discussed the series of patent infringement suits brought by GreenShift and its New York subsidiary, GS Cleantech (GS), against a host of ethanol producers across the midwestern United States.

The lawsuits involve GS’s patented ethanol production processes, described and claimed in a host of patents, principally the ’858 Patent Family consisting of U.S. Patent Nos. 7,601,8588,008,516 and 8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” and U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.”

The patents relate to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

GS has been on an aggressive patent enforcement campaign over the last several years, and multiple actions were consolidated in the Southern District of Indiana, where the ’858 Patent Family was construed and re-construed.

In a sweeping 233-page decision issued in October and made public last month, the court ruled on all of the pending motions for summary judgment brought by the original parties to the suit.

On plaintiff’s side, the motions brought by GS were for summary judgment of infringement of at least some claims of each patent in the ’858 Patent Family by each of fourteen different defendants.

On the other side, the defendants of course moved for summary judgment of non-infringement of the ’858 Patent Family.  The defendants also filed motions for summary judgment of invalidity of the ’858 Patent Family (with GS cross-moving for summary judgment that the patents are valid).

Finally, GS alleged a subset of six defendants infringe U.S. Patent 8,168,037, entitled “Method and systems for enhancing oil recovery from ethanol production byproducts” (’037 Patent).  The ’037 Patent was also the subject of competing motions by both sides for summary judgment of infringement and non-infringement and/or invalidity.

The court made several rulings on infringement, all for defendants.  Here are a couple of highlights:

The court found the defendants entitled to summary judgment of non-infringement of a number of claims of the ’858 Patent Family because the claims require drying the concentrate, which the court construed to mean drying the reduced oil syrup leaving the oil recovery process without mixing it with anything else first.  The defendants’s processes mix the reduced oil thin stillage concentrate before drying the mixture.

A number of defendants’ motions for summary judgment of non-infringement of several claims of the ’516 Patent and ’484 Patent were granted because the claims require that the reduced-oil syrup be “substantially free of oil” and defendants do not remove most of the oil from the incoming stream.

But the big news is the court held three of the four patents (’858, ’516 and ’517) in the ’858 Patent Family invalid because GS made a commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.

Under the patent law provisions in effect at that time, a sale of the invention or offer to sell the invention more than one year before filing a patent application directed to the invention invalidates a patent issuing on that application, so long as the invention was reduced to practice at the time of the offer.

The offer was in the form of a July 31, 2003 letter to a prospective customer which the court found was “the culmination of a commercial offer for sale”:

[T]he major elements of a contract for the sale of a system that could perform the the patented method are contained in the letter:  all items necessary to recover oil and the price.

All four patents of the ’858 Patent Family were also held invalid as obvious over a prior Prevost patent in view of the common practice of the ethanol industry at the time:

Prevost discloses centrifugation of concentrated thin stillage to recover oil.  The only elements of the ’858 patent family missing from Prevost’s explicit teachings are specific pH, moisture content and temperature range requirements that are indisputably encompassed by the standard operating conditions of a dry mill ethanol plant and the heating element recited in some of the claims.

If that weren’t enough, the court held the later-filed ’037 Patent invalid as obvious in view of the ’858 Patent and other prior art references.

At the end of the day, all of GS’s motions for summary judgment of infringement were denied, nearly all of its motions for summary judgment of validity of its patents were denied, none of the defendants was found to infringe GS’s patents, and the ’858 Patent Family was found to be invalid on multiple grounds.

Clean Tech in Court: Green Patent Complaint Update

November 19th, 2014

Several new green patent lawsuits were filed in the last couple of months in the areas of LEDs, smart grid technologies, concentrated solar power, solar inverters, green dry cleaning solvents, and water treatment.

 

LEDs

Cree, Inc. v. Harvatek Corporation et al.

North Carolina LED maker Cree filed a couple of patent infringement suits in September and October.  In the first, Cree sued Harvatek for alleged infringement of six patents relating to white light LED technology.  The complaint was filed September 15, 2014 in the U.S. District Court for the Western District of Wisconsin.

Three of the asserted patents are of a first patent family and share the same title.  Another two are part of a second family and share a title.  The patents-in-suit are as follows:

U.S. Patent No. 6,600,175, entitled “Solid state white light emitter and display using same”

U.S. Patent No. 7,943,945, entitled “Solid state white light emitter and display using same”

U.S. Patent No. 8,659,034, entitled “Solid state white light emitter and display using same” (’034 Patent)

U.S. Patent No. 7,910,938, entitled “Encapsulant profile for light emitting diodes” (’938 Patent)

U.S. Patent No. 8,766,298, entitled “Encapsulant profile for light emitting diodes” (’298 Patent)

U.S. Patent No. 8,362,605, entitled “Apparatus and method for use in mounting electronic elements”

The complaint alleges that a number of Harvatek’s white LED products infringe the patents.

Cree, Inc. v. Honeywell International Inc.

The second suit accuses Honeywell of infringing the ’034, ’938, and ’298 Patents as well as U.S. Patent No. 8,860,058, entitled “Solid state white light emitter and display using same.”

Filed in the Western District of Wisconsin on October 28, 2014, the complaint alleges that Honeywell’s Automation and Control Systems and Aerospace business units are selling infringing products using Cree’s patent white LED technology for backlighting.

The accused products include liquid crystal display devices in Honeywell’s Aviation Lighting and Cockpit Displays, Environment & Combustion Controls, Scanning and Mobility devices, and Measurement and Control Systems as well as certain programmable thermostat products.

Smart Grid

Endeavor MeshTech, Inc. v. EnergyHub, Inc.

On October 14, 2014, Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) filed a patent infringement complaint against Brooklyn-based EnergyHub in the U.S. District Court for the Southern District of New York.

The complaint (Endeavor complaint part_1Endeavor complaint part_2) accuses EnergyHub of infringing three patents in a family – U.S. Patent Nos. 7,379,981  8,700,749, and 8,855,019, each entitled “Wireless communication enabled meter and network.”  The patents-in-suit relate to a self-configuring wireless network including a number vnodes and VGATES.

According to the complaint, EnergyHub’s self-configuring wireless network marketed and sold under the name of its Mercury platform infringe the patents.

 

Concentrated Solar Power

Schott Solar CSP GmbH v. SkyFuel, Inc. et al.

Schott filed suit against SkyFuel and Weihai Golden Solar October 23, 2014 in the U.S. District Court for the District of Colorado.  The complaint alleges infringement of U.S. Patent No. 7,013,887 (’887 Patent) relating to solar absorption receivers used in certain concentrated solar power (CSP) applications.

Entitled “Absorber pipe for solar heating applications,” the ’887 Patent is directed to an absorber pipe having a central metal pipe, a sleeve tube, folding bellows, and an expansion compensation device that connects the metal pipe and sleeve tube so that they can slide relative to each other.

According to the complaint, the defendants sell infringing receivers and/or build and install CSP plants incorporating infringing receivers.

 

Solar Inverters

Enphase Energy, Inc. v. SolarBridge Technologies, Inc.

Inverter maker Enphase Energy sued SolarBridge, alleging infringement of three patents relating to solar inverter technology.  The complaint was filed October 10, 2014 in the U.S. District Court for the Northern District of California.

The asserted patents are U.S. Patent Nos. 7,768,155 and 8,035,257, both entitled “Method and apparatus for improved burst mode during power conversion” and U.S. Patent No. 7,986,122, entitled “Method and apparatus for power conversion with maximum power point tracking and burst mode capability.”

The patents relate to systems and methods for converting DC power generated by solar panels to AC power for the electric grid and includes methodology for storing energy and drawing energy during burst periods and controlling burst modes to improve efficiency in low sunlight conditions.

The accused products are SolarBridge’s Pantheon microinverter and TrueAC module.

Green Dry Cleaning Solvents

GreenEarth Cleaning, L.L.C. v. Glyndon Laundry, Inc. d/b/a Glyndon Lord Baltimore Cleaners

Filed September 22, 2014 in U.S. District Court for the Western District of Missouri, GreenEarth’s complaint accuses Glyndon of, among other things, patent and trademark infringement.

GreenEarth alleges that Glyndon is infringing its “base” patent – U.S. Patent No. 5,942,007 (’007 Patent) – as well as nine other patents which are “variations” of the ’007 Patent.  The ’007 Patent is entitled “Dry cleaning method and solvent” and directed to methods of dry cleaning clothes using a cleaning fluid including a cyclic siloxane composition.

GreenEarth also accuses Glyndon of infringing its trademarks including its leaf and water droplet logo:

According to the complaint, GreenEarth licensed its trademarks and patented processes to Glyndon, but Glyndon stopped paying the requisite fees after August 2013 and continued to use the licensed intellectual property.

Water Treatment

Deerpoint Group, Inc. v. Acqua Concepts, Inc. (DBA Ag Water Chemical of California)

Deerpoint, a provider of water treatment solutions for the agriculture industry, sued Acqua and two former Deerpoint employees in federal court in Fresno, California.

Filed September 25, 2014, the complaint accuses Acqua of infringing U.S. Patent Nos. 6,238,573 (’573 Patent) and 7,638,064 (’064 Patent) and alleges that its former employees misappropriated trade secrets including confidential products and services, client lists, and pricing information.

The ’573 Patent is entitled “Water treatment” and directed to a process for producing chlorine for water treatment including blending calcium hypochlorite and water  to form a saturated solution of calcium hypochlorite and a sink of calcium hypochlorite and feeding chlorinated water to a water supply.

The ’064 Patent is verbosely titled “Continuously feeding chlorine to the irrigation system, monitoring an outer field point to determine whether at least a detectable level of residual chlorine is seen at that point, whereby chlorination disinfection system-wide is achieved.”