Archive for the ‘IP Litigation’ category

Clean Tech in Court: Green Patent Complaint Update

August 1st, 2017

Several new green patent complaints were filed in May and June in the areas of advanced batteries, electroluminescence lighting technology, green cleaning solvents, and LEDs.

 

Advanced Batteries

Milwaukee Electric Tool Corp. et al. v. Chervon (HK) Ltd.

In this lawsuit Milwaukee Electric asserted infringement of three patents relating to lithium-ion battery powered cordless power tools.

The patents-in-suit are:

U.S. Patent No. 7,554,290, entitled “Lithium-based battery pack for a hand-held power tool”

U.S. Patent No. 7,944,173, entitled “Lithium-based battery pack for a high current draw, hand held power tool”

U.S. Patent No. 7,999,510, entitled “Lithium-based battery pack for a high current draw, hand held power tool”

The complaint was filed May 5, 2017 in U.S. District Court for the Eastern District of Wisconsin.  The accused products are Chervon’s Kobalt, Masterforce, Performax, and Craftsman branded tools.

 

Electroluminescence Lighting Technology

Shenzhen EL Lighting Technology Co. v. Midwest Trading Group, Inc.

Filed in U.S. District Court for the District of Colorado on May 5, 2017, Shenzhen’s complaint accuses Midwest Trading Group of infringing U.S. Patent No. 6,960,725 (‘725 Patent).

The ‘725 Patent is entitled “Electroluminescence (EL) tube and wire and manufacturing method” and directed to an electroluminescent wire core having a flexible central electrode, a luminescent layer and a transparent, conductive layer.  An outer surface of the central electrode is coated with the luminescent layer and the transparent, conductive layer, and the luminescent power is covered by thermoplastic macromolecular polymer and synthetic resin.

The accused products are the PowerXcel LIGHT-UP cables.

Green Cleaning Solvents

GreenEarth Cleaning, LLC v. Cameron Park Fresh Cleaners, Inc.

GreenEarth Cleaning, LLC v. Walrus Cleaners, Inc.

These actions for patent infringement, trademark infringement, and breach of contract were filed June 23 and June 26, 2017, respectively, in the U.S. District Court for the Western District of Missouri.

Although the complaints (GreenEarth Cleaning, L.L.C. v. Cameron Park Fresh Cleaners, Inc.GreenEarth Cleaning, L.L.C. v. Walrus Cleaners, Inc.)list nine patents, there is only one count of patent infringement asserting U.S. Patent No. 5,942,007 (‘007 Patent).

The ‘007 Patent is entitled “Dry cleaning method and solvent” and directed to dry cleaning methods comprising the steps of immersing clothes in a dry cleaning fluid including a cyclic siloxane composition, agitating the clothes in the composition, and then removing the cyclic siloxane composition by centrifugal action and air circulation.

According to the Abstract of the ‘007 Patent, the “cyclic-siloxane-based solvent allows the system to result in an environmentally friendly process which is, also, more effective in cleaning fabrics and the like than any known prior system.”

GreenEarth alleges that both defendants breached their respective license agreements with GreenEarth.

 

LEDs

Lighting Science Group Corporation v. Leedarson Lighting Co. et al.

Lighting Science Group sued Leedarson May 9, 2017 in federal court in Orlando for infringement of three patents: U.S. Patent No. 8,201,968 (‘968 Patent), U.S. Patent No. 8,967,844 (‘844 Patent), and U.S. Patent No. 8,672,518 (‘518 Patent).

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.

The complaint alleges that defendant’s downlight luminaires, including the DL-N19A9ER1-27 and DL-N19A11FR1-27 families of products, infringe the asserted patents.

Nitride Semiconductors Co. v. Rayvio Corporation

In this lawsuit involving UV LED technology, Nitride accuses Rayvio of infringing U.S. Patent No. 6,861,270, entitled “Method for manufacturing gallium nitride compound semiconductor and light emitting element” (‘270 Patent).

The ‘270 Patent is directed to a method for manufacturing a GaN compound semiconductor which can improve light emitting efficiency even when dislocations are present. An n type AlGaN layer, a undoped AlGaN layer, and a p type AlGaN layer are laminated on a substrate to obtain a double hetero structure. When the undoped AlGaN layer is formed, droplets of Ga or Al are formed on the n type AlGaN layer.

The compositional ratio of Ga and Al in the undoped AlGaN layer varies due to the presence of the droplets, creating a spatial fluctuation in the band gap. Because of the spatial fluctuation in the band gap, the percentage of luminous recombinations of electrons and holes is increased.

The complaint was filed May 23, 2017 in U.S. District Court for the Northern District of California.  The accused products include Rayvio’s SB4 LED.

Document Security Systems, Inc. v. Cree, Inc.

Document Security Systems, Inc. v. Everlight Electronics Co. et al.

Document Security Systems (DSS) filed two lawsuits June 8, 2017 in U.S. District Court for the Central District of California asserting several LED patents.

The complaint against Cree (Document Security Systems, Inc. v. Cree, Inc.) lists as accused products, e.g., some of Cree’s XLamp ML products, CLM Series products, CLP Series products, and XLamp XB-D Family LED products.

The complaint against Everlight (Document Security Systems, Inc. v. Everlight Electronics Co., Ltd. et al) lists the PLCC Top View SMD LED, the 2214 package series, the 3020 package series, and several other products.

The combination of asserted patents varies by suit but comprise the following:

U.S. Patent No. 6,949,771, entitled “Light source”

U.S. Patent No. 7,256,486, entitled “Packing device for semiconductor die, semiconductor device incorporating same and method of making same”

U.S. Patent No. 7,279,355, entitled “Method for fabricating a packing device for semiconductor die and semiconductor device incorporating same”

U.S. Patent No. 7,524,087, entitled “Optional Device”

U.S. Patent No. 7,919,787, entitled “Semiconductor device with a light emitting semiconductor die”

 

Everlight Electronics Co. v. Bridgelux, Inc.

On the enforcement side, Everlight sued Bridgelux for patent infringement June 10, 2017 in federal court in San Francisco.

U.S. Patent Nos. 6,335,548 and 7,253,448 entitled “Semiconductor radiation emitter package” and directed to a semiconductor optical radiation package including a leadframe, a semiconductor optical radiation emitter, and an encapsulant.  The leadframe has a heat extraction member, which supports the semiconductor optical emitter and provides one or more thermal paths for removing heat.  The encapsulant covers and protects the emitter and optional wire bonds from damage and allows radiation to be emitted.

The complaint alleges that Bridgelux’s 2835 LED products infringe the patents.

 

Nanolumens Acquisition Inc. et al. v. Gable Signs & Graphics, Inc.

Nanolumens Acquisition Inc. et al. v. InfiLED USA, LLC

Nanolumens Acquisition Inc. et al. v. PixelFlex LLC

Nanolumens filed at least three infringement suits in June, each asserting three flexible LED display patents.

The patents are U.S. Patent No. 8,963,895, entitled “Ubiquitously mountable image display system,” relating to a ubiquitously mountable image display systems; U.S. Patent No. 9,159,707, entitled “Flexible display,” relating to a flexible display.  U.S. Patent No. 9,640,516, entitled Flexible display apparatus and method”,” relating to a flexible display apparatus and methods.

The complaint against Gable was filed June 9, 2017 in U.S. District Court for the District of Maryland; the complaint against InfiLED was filed June 9, 2017 in federal court in Atlanta; the complaint against Pixelflex was filed June 12, 2009 in federal court in Nashville.

Celgard Urges Supremes to Condemn Judgments Without Opinions

July 13th, 2017

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

In these lawsuits, Celgard has asserted U.S. Patent No. 6,432,586 (’586 Patent).  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.

A bunch of competitors challenged the ‘586 Patent in inter partes review (IPR) proceedings in the U.S. Patent and Trademark Office (USPTO).  After the Patent Trial and Appeal Board (PTAB) of the USPTO found claims 1-11 of the ‘586 patent invalid as obvious in the proceedings brought by LG Chem, Celgard appealed.

In a one-line per curiam order handed down in December last year, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB decision.  The Federal Circuit denied Celgard’s subsequent petition for rehearing en banc.

Celgard has now appealed the case to the Supreme Court.  In its petition for certiorari, the company asks the Supremes to consider four questions.

First, are IPR proceedings unconstitutional?:

Whether inter partes review – an adversarial process used by the the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Second, are the Federal Circuit’s judgments without opinions improper?:

Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?

Third, and related to the second question, do the Federal Circuit’s judgments without opinions violate the principles of justice?:

Whether the Federal Circuit’s pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?

Fourth, Celgard challenges the PTAB’s obviousness ruling:

Whether the Patent Office’s consistent practice of failing to consider the claimed invention “as a whole” and failing to consider whether the combination of elements would lead to “anticipated success” in an obviousness determination conflicts with 35 U.S.C. § 103 and this Court’s precedent in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)?

For more on the importance of the issues raised in this advanced battery case, see Patently-O’s post here.

For my part, I probably too frequently judge without opining.  Perhaps there’s a broader lesson for all of us here…

Clean Tech in Court: Green Patent Complaint Update

May 29th, 2017

There were many new green patent complaints filed in March and April in the areas of advanced batteries, fuel efficiency, green cleaning solvents, LEDs, smart grid, and solar power.

 

Advanced Batteries

Somaltus LLC v. Johnson Outdoors, Inc.

On March 14, 2017 Somaltus, a non-practicing entity, filed a patent infringement complaint against Johnson Outdoors in federal court in Marshall, Texas.

The lawsuit asserts U.S. Patent No. 7,657,386, entitled “Integrated battery service system (‘386 Patent).

The ‘386 Patent is  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.

The accused products are Minn Kota Digital Onboard Chargers.

 

Fuel Efficiency

Transtex LLC et al. v. WABCO Holdings Inc.

In this lawsuit involving aerodynamic trailer skirts for improving the efficiency of truck trailers, Transtex has asserted eight patents against WABCO.

The patents are as follows:

U.S. Patent No. 7,748,772, entitled “Resilient aerodynamic trailer skirts “

U.S. Patent No. 7,887,120, entitled “Aerodynamic trailer skirts”

U.S. Patent No. 7,942,467, entitled “Aerodynamic skirt support member”

U.S. Patent No. 7,942,469, entitled “Aerodynamic skirt panel”

U.S. Patent No. 7,942,471, entitled “Aerodynamic skirt shape”

U.S. Patent No. 8,292,351, entitled “Resilient strut for aerodynamic skirt”

U.S. Patent No. 8,449,017, entitled “Aerodynamic skirt resilient member”

U.S. Patent No. 8,678,474, entitled “Self-repositioning aerodynamic skirt”

The accused products are the TrailerSkirt TS248 and TS259 flat panel trailer skirts.

 

Green Cleaning Solvents

GreenEarth Cleaning, LLC v. Natomas Fresh Cleaners, Inc.

This action for patent infringement, trademark infringement, and breach of contract was filed April 18, 2017 in the U.S. District Court for the Western District of Missouri.

Although the complaint lists nine patents, there is only one count of patent infringement asserting U.S. Patent No. 5,942,007 (‘007 Patent).

The ‘007 Patent is entitled “Dry cleaning method and solvent” and directed to dry cleaning methods comprising the steps of immersing clothes in a dry cleaning fluid including a cyclic siloxane composition, agitating the clothes in the composition, and then removing the cyclic siloxane composition by centrifugal action and air circulation.

According to the Abstract of the ‘007 Patent, the “cyclic-siloxane-based solvent allows the system to result in an environmentally friendly process which is, also, more effective in cleaning fabrics and the like than any known prior system.”

GreenEarth alleges that Natomas Fresh, which had a license from GreenEarth, continues to use liquid silicone as a dry cleaning solvent though it is no longer a licensee.

 

LEDs

Document Security Systems, Inc. v. Seoul Semiconductor Co. et al.

Document Security Systems, Inc. v. Everlight Electronics Co. et al.

Document Security Systems, Inc. v. Cree, Inc.

In three lawsuits filed April 13, 2017 in federal court in Marshall, Texas, Document Security Systems has sued Seoul Semiconductor (Document Security Systems, Inc. v. Seoul Semiconductor Co., Ltd. et al.), Everlight Electronics (Document Security Systems, Inc. v. Everlight Electronics Co., Ltd. et al.), and Cree (Document Security Systems, Inc. v. Cree, Inc.).

The combination of asserted patents varies by suit but comprise the following:

U.S. Patent No. 6,949,771, entitled “Light source”

U.S. Patent No. 7,256,486, entitled “Packing device for semiconductor die, semiconductor device incorporating same and method of making same”

U.S. Patent No. 7,279,355, entitled “Method for fabricating a packing device for semiconductor die and semiconductor device incorporating same”

U.S. Patent No. 7,524,087, entitled “Optional Device”

U.S. Patent No. 7,919,787, entitled “Semiconductor device with a light emitting semiconductor die”

The accused products include LED devices for the automotive market.

Epistar Corporation v. Lowe’s Companies, Inc.

Epistar sued Lowe’s for patent infringement on April 28, 2017 in U.S. District Court for the Central District of California.

The patents-in-suit are:

U.S. Patent No. 6,346,771, entitled “High power LED lamp”

U.S. Patent No. 7,560,738, entitled “Light-emitting diode array having an adhesive layer”

U.S. Patent No. 8,791,467, entitled “Light emitting diode and method of making the same”

U.S. Patent No. 8,492,780, entitled “Light-emitting device and manufacturing method thereof”

U.S. Patent No. 8,587,020, entitled “LED Lamps”

According to the complaint, the Kichler Lighting 60 W equivalent dimmable bulb, the Utilitech 60 W equivalent warm white bulb and similar products infringe the patents.

 

Golight, Inc. v. KH Industries, Inc. et al.

Filed March 1, 2017 in the U.S.District Court for the District of Colorado, Golight’s lawsuit asserts U.S. Patent No. 9,255,687, entitled “LED system and housing for use with halogen light fixtures” (‘687 Patent).

The complaint alleges that KH’s LED NightRay line of lighting products infringes the ‘687 Patent.

The ‘687 Patent is directed to an optical projection lens for mounting in front of LEDs.  The lens has a plurality of protrusions of varying thickness wherein the outermost edges of each protrusion has the thickest measurement, the center of each protrusion has the thinnest measurement, and the protrusions merge individual beams of light into a single beam of light.

 

Lemaire Illumination Technologies, LLC v. LG Electronics USA, Inc. et al.

Lemaire Illumination Technologies sued LG for alleged infringement of three patents relating to LED lighting technology.

The patents-in-suit are U.S. Patent Nos. 6,095,661 (‘661 Patent), 6,488,390 (‘390 Patent) and 9,119,266 (‘266 Patent).

The ‘661 Patent is entitled “Method and apparatus for an L.E.D. flashlight” and the ‘390 Patent is entitled “Color-adjusted camera light and method” and these related patents are directed to an LED flashlight including  a control circuit for maintaining a predetermined light output level of the LED units as a charge on a battery varies.

The ‘266 Patent is entitled “Pulsed L.E.D. illumination apparatus and method” and directed to an illumination source for a camera including one or more LEDs and a control circuit for driving the LEDs with electrical pulses at a frequency high enough that light produced has an appearance to a human user of being continuous rather than pulsed.

Filed in federal court in Marshall, Texas on April 14, 2017, the complaint lists the LG G3 and G4 smartphones as accused devices.

 

Philips Lighting North America Corporation et al. v. Deco Enterprises, Inc.

In a lawsuit filed April 12, 2017 in U.S. District Court for the District of Massachusetts, Philips asserted five patents related to LED drivers and circuits against Deco.

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. 6,586,890, entitled “LED driver circuit with PWM output”

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. 8,070,328, entitled “LED downlight”

The accused devices listed in the complaint include the Lucera series surface-mounted LED lighting fixtures.

 

Putco, Inc. v. Metra Electronics

This lawsuit involves LED headlight technology.  Putco alleges that Metra’s Heise Lighting Ssystems LED headlight replacement kits infringe U.S. Patent No. 9,243,796, entitled “LED lamp with a flexible heat sink” (‘796 Patent).

The ‘796 Patent is directed to an LED lamp with a flexible heat sink and a method of installing the lamp into a light fixture.

The complaint was filed March 10, 2017 in U.S. District Court for the Southern District of Iowa.

 

Blackbird Tech v. Civilight North America

Blackbird Tech v. Euri Lighting

Blackbird Tech v. Great Eagle Lighting

Blackbird Tech v. MSI Lighting

Blackbird Tech v. Satco Products

Blackbird Tech v. S.E.L.S.

Blackbird Tech initiated several new lawsuits April 19, 2017 in U.S. District Court for the District of Delaware.

The asserted patent in these suits is U.S. Patent No. 7,114,834 (‘834 Patent).  Entitled “LED lighting apparatus,” the ‘834 Patent is directed to a light comprising a housing, a plurality of LED lights coupled in an array inside of the housing, and a reflective protrusion for reflecting light from the LED lights out of the housing.

The LED array receives a consistent flow of DC current that will not result in the LED lights burning out. To prevent the LED array from burning out there is also a current regulator for controlling a current flowing through this LED array.

The complaints can be found here: Blackbird Tech LLC v. Civilight North America Corp.Blackbird Tech LLC v. Euri LightingBlackbird Tech LLC v. Great Eagle Lighting CorporationBlackbird Tech LLC v. MSI Lighting, Inc.Blackbird Tech LLC v. S.E.L.S. USA, LLCBlackbird Tech LLC v. Satco Products, Inc..

 

Smart Grid

Clean Energy Management Solutions, LLC v. ABB Inc.

Clean Energy has asserted infringement of U.S. Patent No. 6,577,962 (‘962 Patent).  The complaint was filed March 1, 2017 in federal court in Marshall, Texas and names ABB as the sole defendant.

Entitled “System and method for forecasting energy usage load,” the ‘962 Patent is directed to systems and methods for forecasting energy usage load for a facility including a parameter identification module for determining periodic energy load usage of the facility and a load prediction module for generating energy usage load forecast profiles for the facility.  A set of matrices may include a matrix for storing coefficients for determining periodic changes in energy load usage, and a model parameter matrix for storing load parameter information.

The accused product is ABB’s Energy Management Software with Energy Management and Optimization Solution.

 

Solar Power

Allsop, Inc. v. Ambient Lighting, Inc.

Allsop sued Ambient for alleged infringement of U.S. Patent Nos. 8,657,461 and 8,192,044, both 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.

The complaint was filed April 10, 2017 in federal court in Seattle.

The accused product are several models of Ambient’s collapsible lanterns, including the “Coastal Blues 12” solar lanterns.

Rillito River Solar LLC v. Ecolibrium Solar Inc.

Rillito River Solar sued Ecolibrium March 22, 2017 in the U.S. District Court for the District of Arizona.

The complaint alleges that Ecolibrium’s EcoX line of products infringe U.S. Patent No. 9,422,723, entitled “Roofing grommet forming a seal between a roof-mounted structure and a roof” (‘723 Patent).

The ‘723 Patent is directed to a roof mount assembly including a piece of flashing positioned on the substrate.  The flashing includes a first surface, a second surface opposite the first surface and an aperture extending through the flashing.  A fastener extends through the flashing aperture, a bracket is connected to the flashing via the fastener, and a water-tight seal is positioned between the flashing aperture and the fastener.

Federal Circuit’s Four Factor Fiddle Raises the Bar for Patent Injunctions

May 17th, 2017

LED colossus Nichia (the world’s largest supplier of LEDs) accused Everlight of infringing three patents relating to tiny LEDs used in LCD backlights, video displays, automobiles, an general lighting:

U.S. Patent No. 8,530,250, entitled “Light emitting device, resin package, resin-molded body, and methods for manufacturing light emitting device, resin package and resin-molded body”;

U.S. Patent No. 7,432,589, entitled “Semiconductor device”; and

U.S. Patent No. 7,462,870, entitled “Molded package and semiconductor device using molded package”

The district court found the patents to be valid and that Everlight infringed all three patents.  However, the court denied Nichia’s request for a permanent injunction.  Everlight appealed on infringement and validity, while Nichia appealed the injunction decision.

On appeal, the important part of the Federal Circuit opinion relates to the law on injunctions in patent cases.

Current law on permanent injunctions for patent infringement comes from the Supreme Court’s eBay v. Mercexchange decision, which established the following four-factor test for determining whether to grant a permanent injunction:

(1) the patentee suffered an irreparable injury;

(2) remedies available at law, such as monetary damages, are inadequate to compensate for the injury;

(3) considering the balance of hardships between plaintiff and defendant, an equitable remedy is warranted; and

(4) the public interest would not be disserved by a permanent injunction.

Since the eBay decision, courts have typically granted a permanent injunction upon a determination that a balancing of all four factors weighed in favor of injunctive relief and the patentee proved either irreparable injury (factor 1) or no adequate remedy at law (factor 2).

Here, however, the Federal Circuit held that proof of irreparable injury is required for a permanent injunction, regardless of whether the patentee has an adequate legal remedy, elevating factor 1 above all the others.

The court of appeal did not find “clear error in the district court’s finding that Nichia failed to prove that it would suffer irreparable harm absent the injunction.”

“Because Nichia failed to establish one of the four equitable factors,” the Federal Circuit continued, “the [district] court did not abuse its discretion in denying Nichia’s request for an injunction.”

And with that conclusion, the Federal Circuit ended its analysis, declining to review the district court’s findings on monetary damages (factor 2):

Because we affirm the court’s conclusion on irreparable harm, we do not reach the adequacy of monetary damages.

This may represent a significant change in the law, where instead of considering and balancing all four factors, the courts require the patentee to satisfy all four elements to obtain injunctive relief.

Such a shift would make it more difficult for a patentee to get an injunction after proving infringement.

Hybrid Vehicle Litigation Report: Paice’s Patent Progress

April 6th, 2017

l_paice

With its seminal patents and continual patent enforcement activity, hybrid vehicle technology company Paice has been a frequent subject of discussion in this space.  In fact, my first post almost ten years ago was about the company’s litigation with Toyota.

There have been a few recent developments to report.

First, in January Paice announced that it had settled its patent litigation with Volkswagen, Audi, and Porsche.  The terms of the settlement agreement are confidential, though Paice said it resolved all legal issues.  Paice had filed an infringement complaint against the German automakers in the U.S. International Trade Commission (ITC) in April 2016.

After that, Paice turned its attention back to Ford, filing a complaint against the American car manufacturer in the ITC in February.

The ITC complaint asserts that Ford’s hybrid vehicles infringe the following patents:

U.S. Patent No. 7,104,347, entitled “Hybrid vehicles” (‘347 Patent)

U.S. Patent No. 7,237,634, entitled “Hybrid vehicles”

U.S. Patent No. 7,455,134, entitled “Hybrid vehicles”

U.S. Patent No. 7,559,388, entitled “Hybrid vehicles” (‘388 Patent)

U.S. Patent No. 8,214,097, entitled “Hybrid vehicles”

The patents are directed to a hybrid electric vehicle controller and related methods for coordinating the operation of the electric motor and gasoline engine of a hybrid vehicle to maximize performance, fuel economy, and emissions efficiency.

Paice alleges that Ford’s hybrid vehicle powertrains and components in the Fusion Hybrid, Fusion Plug-in Hybrid, and Lincoln MKZ Hybrid infringe one or more claims of each of the patents.

Paice and Ford have been involved in hybrid vehicle patent litigation in the past (see, e.g., a prior post here), and Ford has fought back on various fronts, including challenging the ‘347 Patent and the ‘388 Patent in inter partes review (IPR) proceedings in the U.S. Patent and Trademark Office (USPTO).

After the USPTO’s Patent Trial and Appeal Board (PTAB or Board) invalidated several claims of each patent in separate decisions, Paice appealed those decisions.

Last month, Paice suffered two setbacks when the Court of Appeals for the Federal Circuit affirmed the PTAB’s IPR decisions on both the ‘347 Patent and the ‘388 Patent (347 Patent Opinion; 388 Patent Opinion).

In each case, the Federal Circuit rejected nearly all of Paice’s arguments regarding interpretation of certain key claim terms, disclosure of the prior art, and obviousness determinations, finding substantial evidence supported the Board’s findings and there was no error in its conclusions.  For the ‘388 Patent, however, the Federal Circuit reversed as to claim 3, finding the dependent claim did not need to fall with the independent claims.

Clean Tech in Court: Green Patent Complaint Update

March 29th, 2017

Several new green patent complaints were filed in January and February in the areas of advanced batteries, waste-to-energy feedstocks, energy-efficient exercise equipment, and LEDs.

 

Advanced Batteries

Advanced Electrolyte Technologies LLC et al. v. ESDI LLC et al.

Advanced Electrolyte Technologies (AET) sued ESDI and several divisions of Samsung in a complaint filed January 18, 2017 in federal court in Austin, Texas.

AET alleges that the defendants infringe U.S. Patent No. 6,033,809 (‘809 Patent) and U.S. Patent No. 6,927,001 (‘001 Patent), which relate to electrolytes for lithium-ion batteries.

The ‘809 Patent is entitled “Lithium secondary battery and electrolyte thereof” and directed to non-aqueous electrolyte lithium secondary battery comprising a cathode, an anode and a non-aqueous electrolyte comprising an electrolyte dissolved in a non-aqueous solvent, wherein the solvent contains a cyclic carbonate, a linear carbonate, and a sultone derivative.

Entitled “Non-aqueous electrolyte solution and lithium secondary battery,” the ‘001 Patent is directed to non-aqueous electrolytic solution composed of two or more organic compounds dissolved in a solvent composed of a cyclic carbonate and a chain carbonate in which both of the organic compounds have a reduction potential higher than those of the cyclic and chain carbonates, and in which one of the organic compounds has a reduction potential equal to that of another organic compound or has a reduction potential lower or higher than that of another organic compound.

The complaint contains a long list of accused products including batteries used in the Samsung Chromebook 3 and 7 Spin, as well as batteries used in several Samsung Galaxy devices.

 

Somaltus LLC v. Cummins, Inc. et al.

Somaltus LLC v. Honeywell International, Inc.

Somaltus LLC v. Minn Kota, Inc.

Somaltus LLC v. Pro Charging Systems, LLC

Somaltus, a non-practicing entity, filed four new lawsuits on January 12, 2017, all federal court in Marshall, Texas, against Cummins (Somaltus v. Cummins), Honeywell (Somaltus v. Honeywell), Minn Kota (Somaltus v. Minn Kota), and Pro Charging Systems (Somaltus v. Pro Charging Systems).

Each suit asserts U.S. Patent No. 7,657,386, entitled “Integrated battery service system (‘386 Patent).

The ‘386 Patent is  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.

The accused products are the Cummins Energy Command (EC-30) power generation system, Honeywell’s 2.1 Amp Dual USB AC Charging Adapter, the 2.1 Amp Single USB AC Charging Adapter, and the Ovale 4.2 Amp Smart Charging Station, the Minn Kota Digital Onboard Charger, and the Pro Charging Systems Dual Pro Eagle Chargers.

 

Waste-to-energy Feedstocks

Accordant Energy, LLC v. Vexor Technology, Inc. et al.

In this lawsuit Accordant Energy accuses Vexor of infringing two patents relating to engineered feedstocks.

The patents are U.S. Patent Nos. 9,062,268 and 9,523,051, each entitled “Engineered fuel feed stock” and directed to feed stocks for use as gasification and combustion fuels and methods of making the feed stocks.  Components derived from processed MSW waste streams are used to make the feed stocks, which are substantially free of glass, metals, grit and noncombustibles.

Filed February 28, 2017 in U.S. District Court for the Northern District of Ohio, the complaint names Vexor Engineered Fuel as the accused product.

Energy-Efficient Exercise Equipment

Green Fitness Equipment Co. v. Precor Inc.

It’s not every day you see patent litigation involving green exercising technology, but this one is about exactly that.

In a complaint filed February 8, 2017 in U.S. District Court for the Southern Distric of California, Green Fitness alleges that Precor has incorporated its patented invention into its EFC Elliptical Cross-trainer products that include Active Status Light technology.

The patent-in-suit is U.S. Patent No. 8,884,553, entitled “Current monitor for indicating a condition of attached electrical apparatus” (‘553 Patent).

The ‘553 Patent is directed to a current monitor that indicates a condition of attached electrical equipment.  The current monitor can determine a predetermined range in which current being withdrawn by the attached electrical apparatus lies.  Based on the determined range, corresponding display electronic elements, such as light emitting diodes (LEDs), can be activated.

The commercial embodiment of Green Fitness’s patented invention is its Treadmill Saver product.

LEDs

Metrospec Technology LLC v. Hubbell Lighting, Inc.

This lawsuit was filed February 3, 2017 in U.S. District Court for the District of Minnesota.  The complaint asserts three patents relating to high intensity flexible light circuits.

The patents are U.S. Patent Nos. 8,143,631, 8,525,193 and 9,341,355, each entitled “Layered structure for use with high power light emitting diode systems.”

The asserted patents are directed to a layered structure comprising an electrically insulating intermediate layer interconnecting a top layer and a bottom layer.  The top layer, the intermediate layer, and the bottom layer form an at least semi-flexible elongate member which is bendable laterally to a radius of at least 6 inches, twistable relative to its longitudinal axis up to 10 degrees per inch, and bendable to conform to localized heat sink surface flatness variations having a radius of at least 1 inch.

Metrospec alleges that the NorFlex product offered by Hubbell’s Thomas Research Products division infringes the patents.

Unity Opto Technology Co. v. Cree, Inc.

Unity Opto Technology Co. v. Cree, Inc.

Unity Opto Technology (UOT) sued Cree twice in January, seeking a declaratory judgement that Cree’s U.S. Patent Nos. 8,596,819 (‘819 Patent), 8,628,214 (‘214) Patent),  8,998,444 (‘444 Patent) and 9,052,067 (‘067 Patent) are invalid and that UOT does not infringe the ‘067 Patent.

The ‘819 and ‘214 Patents are entitled “Lighting device and method of lighting” and directed to a lighting device which emits light with an efficacy of at least 60 lumens per watt, and up to at least 300 lumens in some embodiments, where the output light has a CRI Ra of at least 90.  The lighting device comprises at least one solid state light emitter, e.g., one or more light emitting diodes, and optionally further includes one or more lumiphor.

The ‘444 Patent is entitled “Solid state lighting devices including light mixtures” and directed to a solid state lighting apparatus including at least a first LED and a second LED.  The first LED emits light in the blue portion of the visible spectrum and red light in response to the blue light. The second LED emits light having a color point that is above the planckian locus of a 1931 CIE Chromaticity diagram, and in particular may have a yellow green, greenish yellow or green hue.

Entitled “LED lamp with high color rendering index,” the ‘067 Patent is directed to an LED lamp that can emit light with a color rendering index (CRI) of at least 90 without remote wavelength conversion.

The first complaint was filed January 3, 2017 in U.S. District Court for the Central District of California.  The second complaint was filed January 6, 2017 in the same court.

Solar Mounting Systems

Rillito River Solar, LLC v. Bamboo Industries LLC

In a lawsuit filed January 26, 2017 in U.S. District Court for the Eastern District of California, Rillito sued Bamboo Industries LLC dba SolarHooks for alleged infringement of three patents relating to solar mounting systems.

The complaint lists SolarHooks’ Composition Flashing Kit as the accused product.

The patents-in-suit are U.S. Patent Nos. 8,153,700 (‘700 Patent), 9,134,044 (‘044 Patent) and 9,447,988 (‘988 Patent).

Entitled “Roofing system and method,” the ‘700 Patent is directed to a roof mounting system which includes a roof substrate and flashing supportable on the substrate and an outwardly extending projection having a concave interior side and an aperture extending through the projection between top and bottom surfaces of the flashing. A seal is provided that is conformable with the concave interior side and can define a seal aperture substantially aligned with the flashing aperture.

The ‘044 and ‘988 Patents are entitled “Roof mount assembly” and directed to a mount assembly which includes a flashing including an aperture, a bracket including a first portion and a second portion, the first portion having an opening and a countersink extending around the opening, the second portion extending at an angle away from the flashing, the second portion including a slot configured to be coupled to the structure, a fastener, and a seal extending around the aperture and positioned between the flashing and the first portion of the bracket, the seal engaging the countersink of the bracket and being compressed against the flashing.

Hmm . . . a Few Bars: Tesla Changes its Tune on Model 3 Trademark

March 8th, 2017

About a year ago, Tesla filed two new trademark applications in the U.S. Patent and Trademark Office (USPTO) – Application Serial Nos. 86/960,133 and 86/960,138 – the first for its three bars design and the second for the mark MODEL 3 with three bars:

 


Last month, Adidas filed an opposition proceeding in the USPTO opposing registration of the two applications.  The problem was that Tesla’s trademark applications were not for electric vehicles, but for clothing.

In its Notice of Opposition, Adidas argued that it would be damaged if Tesla were to obtain these registrations because consumers would be confused by the similar trademarks used on related products and such use would dilute the distinctiveness of Adidas 3-bar brand:

Tesla decided not to fight, instead withdrawing its trademark applications, which led the USPTO Trademark Trial and Appeal Board to declare Adidas the victor.

According to a few recent articles (e.g., on engadget and GeekWire), Tesla has changed its logo from three bars to the number 3.

From a quick scan of the federal trademark records, it doesn’t look like Tesla has filed any new trademark applications since giving up on the bars.  However, the automaker has a pending application for MODEL 3 for clothing – Application Serial No. 86/301,896 – filed back in 2014.

Battery Conference to Offer a Full Day Battery IP Workshop

February 22nd, 2017

The 2017 National Battery (“NAAtBatt”) Annual Meeting and Conference, being held March 14-16 in Litchfield Park, Arizona, will include a full day session (“the first workshop its kind”) devoted to IP issues in advanced batteries.

The Workshop on Intellectual Property Issues in Advanced Battery Technology will cover several topics, including establishing an IP culture at advanced battery companies, patent prosecution in energy storage, licensing battery IP, patent pools and aggregators, advanced battery patent litigation, and big data in advanced battery IP.

The panelists include IP professionals from advanced battery technology companies as well as representatives from the U.S. Department of Energy Office of Technology Transfer, ARPA-E, several national laboratories, the U.S. Patent and Trademark Office, and the European Patent Office.

The workshop web page notes that “[t]he advanced battery industry relies heavily on intellectual property rights” and:

The ability of innovators to protect and monetize their discoveries through intellectual property rights is essential for moving innovations from the laboratory into commerce.

The workshop will run for one day, Tuesday, March 14, concurrently with the first half day of the NAATBatt conference.  CLE credit is available for attorneys.

Attendees may register for the workshop only or for the entire conference.  Registration information can be found here.

Clean Tech in Court: Green Patent Complaint Update

February 13th, 2017

LED technology continues to dominate green patent litigation, with at least 18 new lawsuits filed in November and December of 2016.  Solar mounting systems and waste management each saw one new lawsuit during this period.

 

LEDs

OptoLum, Inc. v. Cree, Inc.

Filed November 3, 2016 in federal court in Phoenix, Arizona, OptoLum’s complaint asserts three patents against Cree.

The patents-in-suit are U.S. Patent Nos. 6,573,536, 6,831,303 and 7,242,028, each entitled “Light emitting diode light source.”  They relate to early (their priority date is May 2002) LED technology designed to provide sufficient light output to be used as a general lighting source rather than a signaling source.

The patents are directed to LEDs that emit white light.  The diodes are mounted on an elongate member which is thermally conductive and is utilized to cool the diodes.

The accused products are Cree LED bulbs from 2013 and 2014 that are replacements for 60W and 100W incandescents.

Analog Integrations Corporation v. MagnaChip Semiconductor Corporation

In this lawsuit, Analog Integrations sued MagnaChip for alleged infringement of U.S. Patent No. 8,339,049, entitled “LED driving circuit having a large operational range in voltage” (‘049 Patent).

The ‘049 Patent is directed to an LED driving circuit including a current selecting circuit that controls the current transmission path in a plurality of LEDs according to respective threshold voltages of corresponding LEDs and a plurality of current limits.

Filed November 6, 2016 in U.S. District Court for the Southern District of New York, the complaint accuses MagnaChip’s driving circuit Product Model No. MAP9000 of infringing the ‘049 Patent.

The Regents of the University of California v. Zlight Technology LLC

The University of California has sued Zlight Technology in a case involving transparent LED technology to enable LED filament-style light bulbs.

UC alleges infringement of U.S. Patent No. 7,781,789, entitled “Transparent mirrorless light emitting diode” (‘789 Patent).

The ‘789 Patent is directed to an (Al, Ga, In)N LED in which multi-directional light can be extracted from one or more surfaces of the LED before entering a shaped optical element and subsequently being extracted to air.  The optical element is molded into a sphere or inverted cone shape, wherein most of the light entering the inverted cone shape lies within a critical angle and is extracted.

The invention also minimizes internal reflections within the LED by eliminating mirrors and/or mirrored surfaces, in order to minimize re-absorption of the LED’s light by the emitting layer (or the active layer) of the LED.

Filed November 7, 2016 in U.S. District Court for the Central District of California, the complaint lists a host of Zlight LED filament products alleged to infringe the ‘789 Patent.

Cree, Inc. v. E. Mishan & Sons, Inc.

Cree, Inc. v. Maxbrite LED Lighting Technology, LLC

Cree has asserted five utility patents and one design patent against E. Mishan & Sons in a lawsuit filed November 11, 2016 in U.S. District Court for the District of Massachusetts.

The patents-in-suit are:

U.S. Patent No. 7,808,013, entitled “Integrated heat spreaders for light emitting devices (LEDs)

U.S. Patent No. 7,858,998, entitled “Semiconductor light emitting devices including flexible silicone film having a lens therein

U.S. Patent No. 8,167,463, entitled “Power surface mount light emitting die package”

U.S. Patent No. 8,622,582, entitled “Power surface mount light emitting die package”

U.S. Patent No. 9,070,850, entitled “Light emitting diode package and method for fabricating same”

U.S. Patent No. D615,504, entitled “Emitter package”

The accused products include flashlights such as the TACLIGHT tactical flashlight product.

The lawsuit against Maxbrite was filed November 18, 2016 in federal court in Oakland, California for both patent and trademark infringement.  For some reason, I haven’t been able to track down the complaint, but it appears to be, at least in part, a counterfeiting case (see LED Inside article here).

Tseng v. BBC International LLC et al.

On December 25, 2016, Shen Ko Tseng, an individual, filed this complaint in federal court in San Francisco against BBC International, Concept Technology, and Terry Electronics alleging infringement of an LED circuit patent.

The asserted patents are U.S. Patent Nos. 7,452,106, and 7,405,674, each entitled “Circuit device for controlling a plurality of light-emitting devices in a sequence” and directed to a circuit device for controlling light-emitting devices disposed in a sequence including a motion activated switch.  The controller is capable of driving the light-emitting diodes lighting up on the basis of a first predefined sequence and a consequent second predefined sequence when triggered by a motion-actuated switch.

The accused products are Batman, Thomas, Peanuts, and Spiderman branded LED illuminated shoes.

 

Blackbird Tech LLC v. Feit Electrical Company, Inc.

Blackbird Tech LLC v. Home Depot U.S.A., Inc.

Blackbird Tech LLC v. Hyperikon, Inc.

Blackbird Tech LLC v. Sunco Lighting, Inc.

Blackbird Tech LLC v. Letianlighting, Inc.

Blackbird Tech LLC v. Halco Lighting Technologies, LLC

Blackbird Tech LLC v. CleanLife Energy LLC

Blackbird Tech LLC v. Evergreen LED, LLC

Blackbird Tech initiated several new lawsuits in the last two months of the year.  The first, against Letianlighting, was filed November 9, 2016 in U.S. District Court for the District of Delaware.

The complaint asserts U.S. Patent No. 7,086,747, entitled “Low-voltage apparatus for satisfying after-hours light requirements, emergency light requirements, and low light requirements” (‘747 Patent).

The ‘747 Patent is directed to an energy efficient lighting apparatus wherein the circuit board is positioned adjacent the ballast cover so that the plurality of light-emitting diodes protrude through the plurality of ballast cover holes in the ballast cover, the lighting apparatus is coupled to a wall switch, and the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.

The other seven complaints were filed December 8 and December 28, 2016, also in Delaware.  The patent in those suits is U.S. Patent No. 7,114,834 (‘834 Patent).  Entitled “LED lighting apparatus,” the ‘834 Patent is directed to a light comprising a housing, a plurality of LED lights coupled in an array inside of the housing, and a reflective protrusion for reflecting light from the LED lights out of the housing.

The LED array receives a consistent flow of DC current that will not result in the LED lights burning out. To prevent the LED array from burning out there is also a current regulator for controlling a current flowing through this LED array.

The accused product in the Feit complaint (Blackbird Tech LLC v. Feit Electrical Company, Inc.) is the 60 Watt Equivalent Dimmable G25 Bulb; the Home Depot complaint (Blackbird Tech LLC v. Home Depot U.S.A., Inc.) lists the Ecosmart 60W LED Replacement bulbs and the Hampton Bay LED Low Voltage 20W Equivalent Spotlight; the accused product in the Hyperikon complaint (Blackbird Tech LLC v. Hyperikon, Inc.) is the Daylight Glow Par 16 bulb, and the Sunco complaint (Blackbird Tech LLC v. Sunco Lighting, Inc.) lists the 6 Watt Pure Efficiency Spot Light.

The accused products listed in the Evergreen complaint (Blackbird Tech v. Evergreen) are the Yigeda Solid State Lighting Chandelier bulbs.  The Cleanlife Energy complaint (Blackbird Tech v. Cleanlife Energy) lists the CleanLife 7W LED MR16 Spot Light, and the Halco complaint (Blackbird Tech v. Halco Lighting Technologies) lists the Halco Solid State Lighting Chandelier bulbs.

 

Lighting Science Group Corporation v. Halco Lighting Technologies

Halco was also sued by LSG for allegedly infringing three patents whose commercial embodiment is LSG’s GLIMPSE lighting family of products.

The lawsuit asserts the following three patents: U.S. Patent No. 8,201,968 (‘968 Patent), U.S. Patent No. 8,967,844 (‘844 Patent), and U.S. Patent No. 8,672,518 (‘518 Patent).

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.

The complaint was filed in federal court in Orlando, Florida on December 21, 2016.

 

Nichia Corporation v. Feit Electric Company, Inc.

Nichia Corporation v. Lowe’s Home Centers, LLC et al.

Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al.

Nichia Corporation v. Vizio, Inc.

Nichia filed four lawsuits in federal court in Marshall, Texas on December 27, 2016, each asserting U.S. Patent No. 9,490,411 (‘411 Patent) (Nichia Corporation v. Feit Electric Company, Inc.; Nichia Corporation v. Lowe’s Home Centers, LLC et al.Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al.Nichia Corporation v. Vizio, Inc.).

The ‘411 Patent is entitled “Light emitting device, resin package, resin-molded body, and methods for manufacturing light emitting device, resin package and resin-molded body” and directed to an LED manufacturing method in which a resin part and a lead are formed in a substantially same plane in an outer side surface, including sandwiching a lead frame provided with a notch part, transfer-molding a thermosetting resin containing a light reflecting material in a mold to form a resin-molded body in the lead frame, and cutting the resin-molded body and the lead frame along the notch part.

The accused Feit products include the Feit Electric 800 Lumen 3000K Dimmable LED, the LED Shop Light, the Dimmable Warm White LED Bulb, and the 40 W Equivalent Soft White Smart LED Bulb.

The accused Lowe’s products include the Utilitech 75 W Equivalent Par38 Warm White LED Flood Light Bulb, the 65 W Equivalent Dimmable Daylight LED Flood Light Bulb, and the 65 W Eqivalent Dimmable Soft White LED Flood Light Bulb.

The accused TCL and Vizio products are certain LED televisions.

 

Solar Mounting Systems

Rillito River Solar, LLC v. IronRidge Inc.

Rillito River Solar (dba EcoFastenSolar) sued IronRidge December 1, 2016 in the U.S. District Court for the District of Arizona.

The complaint alleges that IronRidge’s FlashFoot2 roof mounting system infringes U.S. Patent No. 6,526,701 (‘701 Patent).

Entitled “Roof mount,” the ‘701 Patent is directed to a roof mount including a base member, an attachment mount, and a spacer extending the base member to a roof surface. The base member has a protrusion, and the attachment mount defines a hollowed region for receiving the protrusion to form a compression fitting.  A substantially leak proof assembly is formed when the attachment mount is placed against the base member with a sealing material therebetween.

 

Waste Management

Pannell Manufacturing Corp. v. Smoker et al.

Pannell sued two individuals, Phillips Mushroom Farms, and E&H Conveyors for alleged infringement of three patents relating to mushroom composting.

The patents-in-suit are U.S. Patent Nos. 8,069,608, 8,205,379 and 8,561,344.  They are entitled “Mushroom compost compacting system and method” and are directed to systems and methods for compacting mushroom compost using a roller assembly mounted to a compost receptacle to form a nip, along with a web or conveyor to convey mushroom compost to and through the nip.  Mushroom compost is compacted to a particular height that can be adjusted by the user by adjusting the space between the roller and compost receptacle.

The complaint was filed December 2, 2016 in U.S. District Court for the Eastern District of Pennsylvania.

Patentes Permanentes Verdes in Brazil; Battery Battles at the Board and Border

January 18th, 2017

Before turning to 2017 news, we’ll first briefly catch up on a few stories from December.

In early December, the Brazilian green patent priority examination program (see my original post here and a subsequent critique of the program here) became a permanent service.

Started as a pilot program by the National Institute of Industrial Property in April 2012, Resolution No. 175/2016 made the program permanent on December 6, 2016.

The requirements to participate in the program remain the same:

The application is a utility patent application;

The application is a national application (resident or non-resident);

The application was filed with INPI on or after January 2, 2011; and

The application contains a maximum of 15 claims in total, with up to three independent claims.

Eligible green technologies fall under the following categories: alternative energy, transportation, energy conservation, waste management and agriculture.

During the pilot phase, 325 of 480 applications were accepted and expedited with an average prosecution time of about two years.  The Clarke Modet law firm reported on this here.

LG Chem logo

Previous posts (e.g., here and here) discussed the litigation between Celgard, a North Carolina company that manufactures specialty membranes and separators for lithium ion batteries, and LG Chem.

The patent at issue is U.S. Patent No. 6,432,586 (’586 Patent), 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.

After the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office invalidated claims 1-11 of the ‘586 patent in an inter partes review, Celgard appealed.

In a one-line per curiam order handed down December 13, 2016, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB decision.

 

There was a major development in the litigation between chemical giant BASF and UChicago Argonne LLC (Argonne), on the one hand, and Belgium-based Umicore and Japan-based Makita Corporation involving two patents relating to cathode materials for lithium-ion batteries.

As reported in a previous post, BASF and Argonne filed a complaint in the U.S. International Trade Commisson (ITC) in February 2015 asking the ITC to investigate whether Umicore, Makita and their U.S. subsidiaries imported and sold in the United States lithium ion cathode materials and batteries that infringe U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent).

In a December 16, 2016 order, the ITC found that Umicore induced infringement of the asserted patents through conduct relating to imports of the battery materials.

The order expanded upon a prior determination by an ITC administrative law judge that Umicore was liable for contributory infringement of the patents.  The ITC also issued a limited exclusion order banning importation of Umicore’s lithium ion cathode materials into the United States.

The ‘082 and ‘143 Patents are 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.

Read BASF’s press release about the ITC decision here.