Archive for the ‘IP Litigation’ category

Tesla Faces Renewed Trademark Trouble in China

July 25th, 2014

Tesla’s intellectual property is in the news again, but this time it’s a trademark issue.

A previous post reported on Tesla’s trademark problem in China.  Evidently, a businessman named Zhan Baosheng had registered the TESLA (or “Te Si La” transliterated) trademark in China in 2006, in both English and Chinese.

While Zhan’s trademark rights initially blocked Tesla from using the mark there, in early 2014 the company announced that it had resolved the matter though a court decision granting it the right to use the TESLA mark in China.

So Tesla seemed to be in the clear.  But there is renewed uncertainty about the company’s ability to use its brand in China.

Apparently unhappy with the initial result, Mr. Zhan is now suing Tesla for trademark infringement.  According to his lawyer, Zhan is demanding that Tesla 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.

Per my prior post, it seems like Zhan is seeking nothing more than a big pay day, as opposed to protecting legitimate business interests.

The case will be heard on August 5th by the Beijing Third Intermediate Court.

This is not the first time a U.S. clean tech company has faced IP difficulties in China – American Superconductor has been involved in major copyright and trade secret litigation with Chinese wind turbine maker Sinovel.

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

July 9th, 2014

A number of green patent complaints have been filed in the last several months in the areas of energy management software, LEDs, smart meters, vertical axis wind turbines, and wastewater treatment.  This post covers new lawsuits filed from the end of March through the end of June.

 

Energy Management Software

Intercap Capital Partners, LLC  v. BuildingIQ, Inc.

On April 3, 2014, Intercap filed a patent infringement complaint against BuildingIQ in the U.S. District Court for the District of Delaware.  Intercap asserted U.S. Patent No. 8,078,330 (’330 Patent), alleging that the BuildingIQ software of system infringes the ’330 Patent.

Entitled “Automatic energy management and energy consumption reduction, especially in commercial and multi-building systems,” the ’330 Patent is directed to methods of managing energy usage data including monitoring current energy usage of the energy consumption devices in a building, monitoring building temperature, a building humidity, a building COlevel, a weather forecast and a real-time energy price, and initiating a real-time control of each energy consumption device based on the variables in response to a forecast that a new energy usage peak is approaching.

LEDs

Honeywell International Inc. v. Cree, Inc.

Honeywell sued major LED manufacturer Cree for infringement of U.S. Patent No. 6,373,188 (’188) and Reissue Patent No. RE41,685 (a reissue of U.S. Patent No. 6,666,567).

The ’188 Patent is entitled “Efficient solid-state light emitting device with excited phosphors for producing a visible light output” and directed to and LED having a phosphor layer and a reflector means adjacent to one side of the phosphor layer for reflecting some of the radiation and light emission that exits from the phosphor layer back into the phosphor layer.

The reissue patent is entitled “Light source with non-white and phosphor-based white LED devices, and LCD assembly” and relates to a light source with an LED coupled to the floor of an optical cavity to permit light to be emitted from the base of the LED and a reflective protrusion below the LED to aid in redirecting light forward.

The complaint was filed March 31, 2014 in the U.S. District Court for the District of New Jersey.

 

Koninklijke Philips N.V. et al. v. Schreder Lighting LLC et al.

Filed May 27, 2014 in the U.S. District Court for the District of Massachusetts, Philips’ complaint asserts the following twelve LED patents:

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

U.S. Patent No. 6,234,645, entitled “LED lighting system for producing white light”

U.S. Patent No. 6,234,648, entitled “Lighting system”

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

U.S. Patent No. 6,513,949, entitled “LED/phosphor-LED hybrid lighting systems”

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. 6,692,136, entitled “LED/phosphor-LED hybrid lighting systems”

U.S. Patent No. 6,788,011, entitled “Multicolored LED lighting method and apparatus”

U.S. Patent No. 6,806,659, entitled “Multicolored LED lighting method and apparatus”

U.S. Patent No. 6,972,525, entitled “LED switching arrangement”

U.S. Patent No. 7,274,160, entitled “Multicolored lighting method and apparatus”

According to the complaint, Schreder’s floodlight, street-light, residential and urban area LED lighting products, including the Alura LED, FV32 LED, Hestia LED, Piano, Teceo, Akila, Isla LED, Modullum, Neos LED and Nemo brands for, infringe one or more of the asserted patents.

 

Smart Meters

Sensor-Tech Innovations LLC v. Texas-New Mexico Power Company

Austin, Texas-based Sensor-Tech filed a patent infringement suit against the Texas-New Mexico Power Company (TNMP) for alleged infringement of a patent related to smart meter technology.

The complaint, filed in federal court in Marshall, Texas on June 20, 2014, asserts U.S. Patent No. 6,505,086 (’086 Patent).  Entitled “XML sensor system,” the ’086 Patent is directed to a sensor sommunication system adapted to transmit a sensor data file in XML format.

According to the complaint, TNMP’s advanced metering system infringes at least three claims of the ’086 Patetn.

 

Vertical Axis Wind Turbines

SAWT Inc. et al. v. Joe Moore Construction Inc. et al.

On May 13, 2014 SAWT filed a complaint for patent infringement in federal court in Los Angeles.  SAWT has accused Joe Moore Construction, d/b/a Wind Sun Energy Systems and co-defendant Urban Green Energy of infringing U.S. Patent No. 7,967,569 (’569 Patent).

The ’569 Patent is entitled “Vertical shaft wind turbine and method of installing blades therein” and directed to a vertical shaft wind turbine wherein the airfoil of each turbine blade is an asymmetrical camber airfoil, each blade is installed with only the convex surface facing the vertical shaft, and a rotary angle of each blade is between 0 and 15 degrees.

The ’569 Patent is owned by co-plaintiff Shanghai Aeolus Windpower Technology; SAWT is a non-exclusive licensee.  This is an interesting one as it’s rare to see litigation over small (non-utility scale) wind turbines, particularly of the vertical axis type.

Wastewater Treatment

Chaffin v. Braden and LBC Manufacturing

Mark N. Chaffin, an individual, sued LBC Manufacturing for infringement of U.S. Patent No. 6,932,912, entitled “Wastewater treatment system for residential septic systems” (’912 Patent).

The ’912 Patent is directed to wastewater treatment systems and methods wherein a chlorine supply tube is in communication with a venturi chamber and in constant fluid communication a chlorine supply in a chlorine supply canister.  As recirculating pumped sewage effluent flows through the venturi chamber, chlorine from the supply canister is continuously drawn into the venturi chamber and into a recirculation pipe.

Filed April 16, 2014 in federal court in Victoria, Texas, the complaint alleges that the LBC500 liquid bleach chlorinator infringes the ’912 Patent.

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

June 26th, 2014

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

 

Hybrid Electric Vehicles

Paice LLC v. Ford Motor Company

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

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

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

 

Biofuels (Ethanol Production)

GS Cleantech Corporation v. Pacific Ethanol Stockton LLC

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

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

The next day, GS sued Pacific Ethanol Magic Valley in the U.S. District Court for the District of Idaho.  The Idaho complaint asserted the ’858 Patent as well as U.S. Patent Nos. 8,008,516 and8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” and as U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.”

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

GS has been on an aggressive patent enforcement campaign over the last several years.  Multiple actions were consolidated in the Southern District of Indiana, where the asserted patents were construed and re-construed.

 

LEDs

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

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

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

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

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

 

Lighting Science Group Corporation v. Cooper Lighting, LLC

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

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

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

 

Water Treatment

Envirogen Technologies, Inc. v. Maxim Construction Corporation

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

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

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

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

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

 

Exhaust Treatment Catalysts

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

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

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

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

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

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

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

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

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

Federal Circuit Gives GE LED Patents New Life in Suit Against AgiLight

May 30th, 2014

 

A previous post discussed AgiLight‘s summary judgment win at the district court level where the LED lighting developer’s products were found not to infringe two GE patents, U.S. Patent Nos.7,633,055 (’055 Patent) and 7,832,896 (’896 Patent)

Two other GE patents  - 7,160,140 entitled “LED string light engine” (’140 Patent) and 7,520,771 entitled “LED string light engine and devices that are illuminated by the string light Engine”(’771 Patent) - had previously been found not infringed in an earlier summary judgment decision.

The ’055 and ’896 Patents are entitled “Sealed light emitting diode assemblies including annular gaskets and method of making same” and “LED light engine,” respectively, and relate to LED string light engine structures and assembly methods.

GE appealed, and a recent decision by the Court of Appeals for the Federal Circuit reversed the grant of summary judgment with respect to the ’896 Patent (and the two other GE patents) and affirmed summary judgment with regard to the ’055 Patent.

The Federal Circuit found the district court’s interpretation of the claim term “IDC connector” in the ’140 and ’771 Patents was incorrect and unduly narrow.  The district court limited it to a more specialized connector having four electrical terminals and a two-part housing that snaps together so the terminals pierce the conductor’s insulation.

The term should have been construed consistent with its ordinary meaning of “a connector that displaces insulation surrounding an insulated conductor to make electrical contact with the conductor.”

The issue for the ’896 Patent was whether the claim term “substantially ellipsoidal inner profile” means the entire inner profile of the LED lens must be substantially ellipsoidal or only a portion is substantially ellipsoidal.  The district court held that the entirety of the lens must be substantially ellipsoidal, and AgiLight’s product did not infringe because it included non-ellipsoidal, conical portions.

The Federal Circuit disagreed, observing that in the only embodiment disclosed in the ’896 Patent (in Figure 7, reproduced below) the bottom half of the lens is not ellipsoidal:

According to the patent, the inner profile 152 of Figure 7 is ellipsoidal.  It is undisputed that only a portion of the inner profile 152 (the part above the line at 152) is substantially ellipsoidal.  The bottom half of that inner profile (the portion below the line at 152) is not arguably substantially ellipsoidal.

Thus, there was a genuine factual dispute as to whether the AgiLight product includes a “substantially ellipsoidal profile” and summary judgment was improper:

A key claim term at issue with respect to the ’055 Patent was an “annular gasket,” which the district court had interpreted to require an opening in its center that is capable of sealing off its center area.

In the the ’055 Patent, this feature is shown in Figure 4, where the annular gasket 32 surrounds LED 16 before a generally hollow member (not shown) is sealed against the top of the annular gasket to fully enclose the LED.

The court determined that the AgiLight lens (shown below) is not an “annular gasket” because the inner surface lacks an “opening” as required by the court’s interpretation of the term.  The Federal Circuit agreed, noting that a concave inner surface cannot be an opening.  So GE will get another opportunity to prove infringement of three the four patents asserted against AgiLight.

In GE Wind Patent Fight Federal Circuit Affirms Wilkins Inventorship Story is Incredible

May 22nd, 2014

In previous posts (hereherehere, and here), I discussed a significant ancillary battle in the GE-Mitsubishi wind patent war.  In this entertaining sideshow, GE and a former employee, Thomas Wilkins, have been fighting over ownership of two of the patents involved in the larger litigation.

The patent-at-issue in this case is U.S. Patent No. 6,921,985 (’985 Patent).  The ’985 Patent is directed to a wind turbine that includes a blade pitch control system and a turbine controller coupled with the blade pitch control system.  To increase the reliability of the turbine’s power supply, the turbine controller causes the blade pitch control system to vary pitch in response to transitions between different power sources.

After Wilkins brought a lawsuit to correct inventorship, Mitsubishi intervened in the suit.  The case aroused Mitsubishi’s interest because the ’985 Patent is one of several asserted by GE against Mitsubishi in at least two lawsuits.

After the district court decided that Wilkins was not a co-inventor of the invention claimed in the ’985 Patent, Mitsubishi and Wilkins appealed.

In a recent decision, the Court of Appeals for the Federal Circuit affirmed the district court ruling.

To overcome the presumption that the named inventors on a patent are correct, an alleged co-inventor must prove his inventive contribution by clear and convincing evidence.  The putative inventor can’t rely on his testimony alone.  Rather, there must be evidence to corroborate his testimony.

The problem for Wilkins was that the district court found his testimony on inventorship not credible, and the proffered corroborating witness testimony fell short because the witnesses either relied on Wilkins or failed to provide ample basis for their opinions.

On appeal, Wilkins acknowledged his credibility problems but argued that the instances in which his credibility was impeached only extended to “immaterial and tangential points.”  The appeals court disagreed:

Based on the trial record, we find no clear error in the district court’s assessment that the substance of Wilkins’s testimony, which addressed central issues such as conception and contribution, was inconsistent and purposefully evasive.  We agree with the district court’s conclusion that Wilkins left his case with no credibility.

As it turned out, this wasn’t an issue of insufficient corroborating evidence of inventorship.  Rather, as the court explained, the document Wilkins sent to GE’s German engineers, which he argued demonstrated his conception of the invention, did not disclose any elements of the claimed invention:

Notwithstanding that the record is devoid of proof that the German engineers relied on anything discussed in that document as part of their conception . . . our review of the record verifies that the document does not disclose any of the subject matter claimed in the ’985 patent.

In fact, 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.”

Therefore, there was no credible evidence of Wilkins’s conception:  ”Wilkins provided no credible testimony for that document to corroborate” and “without credible testimony from Wilkins, there was nothing to corroborate.”

This chapter in the GE-Mitsubishi patent litigation appears to be closed.

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

April 15th, 2014

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Butamax Wins on Appeal as Federal Circuit Reverses Enzyme Claim Construction

March 18th, 2014

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

The Top Green IP Stories of 2013

January 13th, 2014

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

 

No. 7:  Green Patent PR

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

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

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

 

No. 6:  Boston University Leads LED Lit

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

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

 

No. 5:  Criminalizing Greenwashing 2.0

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

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

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

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

 

No. 4:  Sinovel Faces Criminal Indictment in US

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

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

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

 

No. 3:  Greenwashing Costs LED Maker $21 Million

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

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

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

 

No 2:  Burgeoning Biofuels Battles

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

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

 

No. 1:  Solar Patent Surge

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

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

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

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

 

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

 

 

 

 

On the Present and Future of Green Patent Litigation

December 6th, 2013

Law360 recently published an article assessing the state of renewable energy patent litigation.  Entitled “Clean Energy Patent Boom Sets Stage For IP Wars,” the gist of the piece is that there has been little patent litigation in the renewable energy industry so far, but the substantial growth in patents on renewable technologies in the last decade will soon change that.

Some patent litigators attribute the dearth of renewables litigation to the supposedly early stage of the industry where players are “staking out their territory” in an as-yet uncrowded market.  At this point, they say, patent litigation is premature as the early entrants don’t know how valuable their technologies will be.

The article notes the exceptions of the wind and solar markets, which are more mature, citing one lawsuit in the major patent battle between Mitsubishi and GE (see, e.g., here) and and the Zep – Westinghouse Solar litigation over solar mounting systems patents.

However, the attorneys interviewed for the piece said biofuels and energy storage patent litigation would be “further off,” overlooking two significant and sprawling patent battles in biofuels (Gevo-Butamax, and GS Cleantech) and at least one major advanced battery suit (A123-HydroQuebec).

Since the lawsuit started in January 2011 the ongoing patent litigation between advanced biofuels company Gevo and BP-DuPont joint venture Butamax has grown to encompass at least 17 suits and 14 patents relating to methods of producing biobutanol.

In another major case involving corn ethanol production technology, GreenShift and its New York subsidiary, GS Cleantech, brought a series of patent infringement suits against a host of ethanol producers across the midwestern United States.  The cases were consolidated in federal court in the Southern District of Indiana.

There has been significant advanced battery patent litigation over the last several years, most notably the cases involving A123 Systems Inc. (A123), a Boston area lithium ion battery maker, Canadian utility Hydro-Quebec (H-Q), the exclusive licensee of several patents relating to cathode materials, and the Board of Regents of the University of Texas (UT), the owner of the patents.  There was also a recent lawsuit brought by Celgard against Sumitomo involving separators for advanced batteries.

I think the article’s exclusive focus on renewable energy technologies misses the bigger picture that the broader clean tech industry has seen a number of large and important green patent battles, including Paice v. Toyota over hybrid-electric vehicle patents and Nichia v. Seoul involving LED design patents.

Generally, though, the article is right that given the sustained surge in patenting green technologies over the past decade or so, in green patent litigation the best is yet to come.

 

Clean Tech in Court: Green Patent Complaint Update

November 8th, 2013

A number of green patent complaints have been filed in the last several weeks in the areas of biofuels production, recycled food service products, LEDs, reusable diapers, water conservation, and gas conversion technology.

 

Biofuels

Novozymes A/S v. Boli Bioproducts USA, LLC

Filed September 11, 2013 in U.S. District Court for the Eastern District of Missouri, Danish corporation Novozymes’ complaint accuses Boli Bioproducts, a Missouri company, of infringing U.S. Patent No. 6,255,084 (’084 Patent).

The ’084 Patent is entitled “Thermostable glucoamylase” and directed to an isolated glucoamylase enzyme which has higher thermal stability than prior glucoamylases.  The patent also claims starch conversion processes using the enzyme. 

The accused product is a glucoamylase enzyme called BOLI GA 130, used for producing glucose from starch in fuel ethanol production and other industrial processes.

 

Recycled, Compostable Food Service Products

Eco-Products, Inc. v. World Centric

Eco-Products, a Boulder, Colorado, company that makes food service products such as cups, containers, plates, and utensils, from renewable and recycled resources, has asserted four design patents against competitor World Centric.

The patents-in-suit are U.S. Patent Nos. D688,552, D684,050, D684,465 and D684859, each entitled “Food container.”

The complaint, filed September 11, 2013 in the U.S. District Court for the District of Colorado, alleges that World Centric’s “Fiber Compost-A-Pack” product infringes the asserted patents.

 

Reusable Diapers

Kanga Care LLC v. GoGreen Enterprises LLC

In this lawsuit between Colorado competitors in the reusable diaper space, Kanga Care sued GoGreen Enterprises for alleged infringement of U.S. Patent No. 8,425,483 (’483 Patent).

The ’483 Patent is entitled “Double gusset cloth diaper along with method for making the same” and directed to a reusable diaper including an exterior panel having a surrounding outer edge margin, an interior panel comprising micro-chamois material and joined to the outer edge margin, and an absorbent pad removably insertable between the interior and exterior panels.

The patented diaper has a first gusset diaper to form a first seal between the inner surface and the legs of the user and a second gusset attached proximate the first gusset.

Kanga Care’s complaint was filed October 11, 2013 in the U.S. District Court for the District of Colorado, and the accused produts are GoGreen’s Champ cloth diapers using dual gusset technology.

 

Water Conservation

D.S. Magic Tech LLC v. Green Light Energy Conservation LLC

D.S. Magic Tech, a New York corporation that installs and distributes water conservation products, sued Green Light for alleged infringement of U.S. Patent No. 8,511,347 (’347 Patent).

The ’347 Patent is entitled “Tamper-resistant water flow restriction system” and directed to a flow restrictor assembly and method for installing the assembly in a  shower.  The invention prevents tampering by concealing the flow restrictor assembly behind a shower wall, attached directly to a water supply line.

The complaint was filed in federal court in Brooklyn, New York on October 8, 2013, and accuses Green Light of selling flow restrictor assemblies and related services that infringe the ’347 Patent.

 

Gas Conversion

Sasol North America, Inc. v. GTLpetrol LLC

Sasol North America (Sasol) is a Houston corporation, and part of South African company Sasol Technology.  Sasol designs and operates gas-to-liquid (GTL) plants for converting natural gas to higher value liquid hydrocarbons such as diesel.

On October 3, 2013 Sasol filed a declaratory judgment action in federal court in Houston, Texas for a judgment that it does not infringe U.S. Patent No. 6,534,551 (’551 Patent), to which GTLpetrol has license rights, and that the ’551 Patent is invalid.

‘The ’551 Patent is entitled “Process and apparatus for the production of synthesis gas” and directed to a process for the production of synthesis gas from a hydrocarbon fuel and steam and/or oxygen where at least part of the required steam is provided by heat exchange against exhaust gas from a gas turbine driving an air separation unit (ASU), and the ASU supplys at least part of the oxygen.

According to the complaint, GTLpetrol met with Sasol about the possibility of partnering on construction of a GTL plant in the United States, but Sasol was unimpressed with the smaller company’s technology proposals and eventually terminated discussions.

Almost two years later, the complaint says, GTLpetrol sent Sasol a cease and desist letter referring to the ’551 Patent and alleging misappropriation of trade secrets.  That letter led to this lawsuit by Sasol.

 

LEDs

Nichia Corporation v. Everlight Electronics Co.

On September 11, 2013 Nichia sued Everlight Electronics in federal court in Marshall, Texas for alleged infringement of U.S. Patent No. 7,432,589 (’589 Patent).  The complaint alleges that Everlight’s LED model 61-238/RSGBB7C-B02/ET infringes the ’589 Patent.

The ’589 Patent is directed to a semiconductor device capable of preventing an adhesive for die bonding from flowing to a wire bonding area.  The semiconductor device includes a housing wherein the wall is formed to extend across the bottom surface of a recess so as to divide the surface of the first lead electrode into a die bonding area and a wire bonding area.

This is not the first lawsuit between these LED rivals (see, e.g., here).

 

Trustees of Boston University LED lawsuits

Boston University launched a huge series of patent infringement lawsuits on September 20, 2013 in federal court in Boston.  There are about 35 new suits - too many to list and upload all the complaints, though they are all very similar and all assert the same patent.  Here are a couple of exemplary complaints:  BU – Acer Complaint; BU – Canon Complaint.

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

Other defendants include AU Optronics, BlackBerry Corporation, Dell, Fujifilm, HTC, Eastman Kodak, Olympus, Sharp, and Sony.  The accused products include digital cameras, smart phones, and other personal electronic devices.