Archive for the ‘IP Litigation’ category

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

April 15th, 2014

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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.

No Fahrvergnügen for Kruse as Volkswagen Escapes Infringement of Diesel Engine Patents

October 24th, 2013

In a previous post, I discussed the infringement suit in which Kruse Technology Partnership (“Kruse”) accused several automakers, including Daimler, Mercedes-Benz USA, Volkswagen, Ford and Chrysler of infringing U.S. Patent Nos. 5,265,562 (“’562 patent”), 6,058,904 (“’904 patent”) and 6,405,704 (“’704 patent”) relating to higher efficiency and lower emission diesel engines.

The asserted patents are entitled “Internal combustion engine with limited temperature cycle” and directed to Kruse’s “Limited Temperature Cycle” technology, which limits peak combustion temperatures in direct injection gas and diesel engines.

The Court of Appeals for the Federal Circuit recently affirmed a district court grant of summary judgment of non-infringement of the ’562 and ’904 Patents in favor of Volkswagen.

According to the ’562 and ’904 Patents, fuel is injected in first and second fractions at different points in the operating cycle of the engine, resulting in a combustion process having “a constant volume (isochoric) phase and a constant temperature (isothermal) phase.”

The asserted claims recite “the combustion as a result of the introduction of the second fraction is a substantially isothermal process,” which was construed by the district court to require that the average cylinder temperature “remains substantially constant from the beginning until the end of the combustion.”

On appeal Kruse first argued this interpretation was incorrect and unduly narrow, but the Federal Circuit disagreed and said the district court’s construction is the “only permissible reading” of the term:

The only permissible reading of the limitation “the combustion . . . is a substantially isothermal process,” is that it requires a substantially constant temperature for the entire second fraction combustion. . . . [T]he combustion . . . is a substantially isothermal process,” does not indicate that only a portion of the combustion is isothermal.

Kruse also contended that the district court erred in holding that isothermal combustion of 23% – 48% of the second fraction in the Volkswagen products was not an infringing equivalent element of the claimed “substantially isothermal process” limitation.  Specifically, Kruse argued that the difference in combustion is insubstantial and one of degree.

The Federal Circuit disagreed.  While some deparature from the entirety of the second fraction combustion might be permissible, the court held that a 23% – 48% duration cannot be equivalent to combustion over the full duration of the fraction:

While the claim limitation, as construed, by no means precludes some departure from the entirety of the second fraction combustion, we find no error in the district court’s conclusion that the claim term is not flexible enough to allow the 23% to 48% duration of the second fraction combustion.  Allowing such a percentage to be equivalent to combustion over the full duration is contrary to the meaning of the claim limitation and would render it meaningless.  Isothermal combustion for less than half of the second fraction combustion cannot logically be considered insubstantially different from combustion from beginning to end; and . . . no reasonable juror could find otherwise.

 

Chrysler Clear as Court Holds ECODIESEL Mark Merely Descriptive

October 17th, 2013

 

I’ve written extensively (see, e.g., here and here) on the descriptiveness hurdles faced by owners of eco-marks containing terms such as “CLEAN”, “GREEN” and ”ECO”, including this author and his blog service mark (see, e.g., here and here).

A recent decision by a federal court in Hawaii provides a window into the fate of a hopelessly merely descriptive mark – ECODIESEL for diesel fuel made from used oil.

Unitek Solvent Services (Unitek) is a Hawaii-based corporation that focuses on recycling, reclamation, and re-use of used oil.  When Unitek began looking into ways to convert used oil into reusable fuel, its president decided on the term ECODIESEL to brand its processed diesel fuel.

In late 2005, Unitek filed a federal trademark application for the ECODIESEL mark.  The application was registered on the Supplemental Register as U.S. Trademark Registration No. 3,166,981 for “diesel fuel” and fuel for motor vehicles, namely diesel.”

By contrast with the Principal Register, the Supplemental Register offers lesser protections but also has lower standards for registrability, including permitting registration of merely descriptive marks.

A mark that is merely descriptive of the goods or services it is being used to market or sell is not registrable on the Principal Register without demonstrating secondary meaning, i.e., that consumers have come to associate the mark with the source of the goods or services.

After Chrysler began marketing some of its vehicles with optional diesel engines under a stylized ECODIESEL design (see above), Unitek sued Chrysler in federal court in Hawaii and moved for a preliminary injunction.

In a recent decision, the court denied the motion and held that Unitek’s ECODIESEL mark is merely descriptive and has not acquired secondary meaning. 

The mark is descriptive, the court held, because it requires no mental leap to determine what goods the mark refers to and instead immediately conveys to the consumer those goods:

The Court holds that no mental leap is required in order to conclude that ECODIESEL is a reference to a diesel fuel product that is more ecological than normal diesel fuel.  Unitek concedes that one well-accepted meaning of “eco” is “environmental friendliness,” and does not argue that the term “diesel” in ECODIESEL is anything other than a generic reference to diesel fuel.  Combining the terms, no imagination is required to discern that this term references ecologically-conscious diesel…not even a mental hop is necessary to link ECODIESEL with Unitek’s fuel product…Thus, the ECODIESEL mark is descriptive.

On acquired distinctiveness, or secondary meaning, Unitek provided evidence that it sells all of the ECODIESEL fuel it produces.  The problem was that all the fuel is sold to just one customer, and that cannot constitute enough consumer recognition to demonstrate secondary meaning:

this uncontroverted evidence actually hurts Plaintiff’s case more than it helps because it is undisputed that Unitek sells all of its ECODIESEL fuel to a single customer, Grace Pacific.  This evidence weighs against a determination of secondary meaning because it illustrates the very limited number of customers who have actually ever purchased Unitek’s fuel product and who may have come to associate ECODIESEL with Unitek.  Although Grace Pacific may associate ECODIESEL with Unitek, this is insufficient to establish that a signficant segment of the relevant public would make the same association.

Absent secondary meaning, the ECODIESEL mark was merely descriptive and not entitled to protection.  The court, therefore, denied Unitek’s motion for a preliminary injunction.

Clean Tech in Court: Green Patent Complaint Update

September 13th, 2013

There have been a number of green patent complaints filed in the last several weeks in the areas of biofuels, LEDs, and smart grid.

 

Biofuels

GS Cleantech Corporation v. Aemetis, Inc. et al.

GS Cleantech Corporation v. Homeland Energy Solutions, LLC

GS Cleantech Corporation v. Little Sioux Corn Processors, LLP

GS Cleantech Corporation v. Southwest Iowa Renewable Energy, LLC

GS recently fired off several new lawsuits involving its patented ethanol production processes.  A complaint filed August 14, 2013 in federal court in Fresno, California accused Aemetis Advanced Fuels of infringing U.S. Patent No. 7,601,858, entitled “Method of processing ethanol byproducts and related subsystems” (’858 Patent).

The other lawsuits, against Southwest Iowa Renewable Energy (Southwest Iowa Complaint), Little Sioux Corn Processors (Little Sioux Complaint), and Homeland Energy Solutions (Homeland Energy Complaint), were filed in July and August in the U.S. District Court for the Northern District of Iowa. 

The asserted patents in these complaints are the ’858 Patent, U.S. Patent Nos. 8,008,516 and 8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” as well as U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.” 

GS also asserted U.S. Patent No. 8,168,037, entitled “Method and systems for enhancing oil recovery from ethanol production byproducts,” against Homeland Energy Solutions. 

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

Trustees of Boston University v. Hewlett-Packard Co.

Trustees of Boston University v. Vyrian, Inc.

Trustees of Boston University v. Sierra IC, Inc.

In August Boston University initiated some new lawsuits in federal court in Boston, continuing its patent enforcement campaign against various LED makers and electronics manufacturers.  The complaints again assert U.S. Patent No. 5,686,738 (’738 Patent) (HP Complaint; Vyrian Complaint; Sierra Complaint) . 

The ’738 Patent is 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.

The accused products are various LED devices and products.

 

Koninklijke Philips N.V. v. Altair Engineering, Inc. et al.

Philips sued Altair in federal court in U.S. District Court for the Western District of Wisconsin requesting a declaratory judgment that U.S. Patent No. 7,049,761 (’761 Patent) is invalid and unenforceable and that Philips’ LED-based replacement tube products do not infringe the patent. 

The ’761 Patent is entitled “Light tube and power supply circuit” and directed to a light tube for a fluorescent light fixure having a plurality of light emitting diodes within the bulb.  According to the complaint, Altair has been trying to get Philips to take a license to the ’761 Patent. 

The complaint also charges Altair with a Lanham Act violation for making false or misleading representations that the ’761 is a “foundational” patent and only companies that have licensed the patent can make LED-based replacement tubes for fluorescent lighting fixtures.

 

Smart Grid

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

In what could prove to be an important case, Emerson is taking on a major clean tech non-practicing entity in Sipco LLC (and the closely related if not identical IPCo), an Atlanta patent licensing and assertion company that holds a number of patents, many relating to remote monitoring and control systems.

Filed in federal court in Atlanta on July 31, 2013, the complaint requests a declaratory judgment of invalidity and non-infringement of at least one claim of each of eight Sipco and IPCo patents.

The listed patents are U.S. Patent Nos. 6,437,692, 6,914,8937,103,511, 7,697,4928,013,7326,044,062, 6,249,516 and 8,000,314, which relate to remote monitoring and control systems.

According to the complaint, Emerson subsidiary Rosemount received a subpoena from Sipco requesting information on products including various wireless communication protocol-enable devices such as Zigbee, WirelessHART, ISA-100, Z-Wave, EnOcean and JenNet.

Sipco has sued utilities and various smart grid players that make smart meters, EV charging stations, building automation systems, and other energy management solutions (see, e.g., previous posts here, here, and here).

 

Betting on Biobutanol and Battling Butamax: A Conversation with Gevo’s General Counsel

September 11th, 2013

 

One of the biggest green patent stories in the last few years has been the burgeoning biobutanol battle between Gevo and BP-DuPont joint venture Butamax Advanced Biofuels.

As with other industries, clean tech companies engage in PR around their patent matters, and this patent litigation is no different.  Part of this green patent war has been fought through PR. 

So when I was offered the opportunity to speak with Brett Lund, Gevo’s Executive Vice President and General Counsel, about this litigation I jumped at the chance.

For starters, this is a very important battle.  The email offer to interview Mr. Lund noted that it’s the “first-ever litigation in the industry of advanced biofuels, and it’s not just one patent – it’s a patent war over who can make isobutanol.”

Lund echoed this point, telling me there are just two main players for isobutanol (there is something called n-butanol, but it’s a less desirable fuel). 

Isobutanol is a very good petroleum substitute and the “ideal molecule” for both fuels and chemicals.  A a water insoluble 4-carbon molecule, it doesn’t get diluted and can be put in pipelines and directly into a refinery.

 Our conversation got into some of the details of the patents initially asserted by Butamax – U.S. Patent Nos. 7,993,889 (’889 Patent) and  7,851,188 (’188 Patent). 

Lund said the patents relate to a naturally occurring isobutanol pathway that has “been around forever.”  Known for over 50 years, Lund told me this 5-step pathway can be used to make very small quantities of isobutanol for things like sake or beer, but it’s hard to produce in large quantities suitable for fuel use.

Gevo’s patents, on the other hand, relate to new, non-naturally occurring pathways that boost isobutanol production.

Lund and I also discussed Gevo’s counterclaims for infringement of U.S. Patent Nos. 8,017,375 (’375 Patent) and 8,017,376 (’376 Patent), directed to recombinant yeast that harbor a variety of genetic modifications helpful for isobutanol production.

While Gevo believes that Butamax’s design-arounds of the ’375 and ’376 Patents are covered under the doctrine of equivalents (DOE), a recent court decision held otherwise, granting Butamax’s motion of summary judgment that it does not infringe the patents, literally or under the DOE.

When asked why the proactive PR, Lund noted that Gevo is a public company with lots of investors and partners and “we want people to know the truth.”  He went on to say that Gevo highly regards patents and patent law.

With respect to Butamax’s patentsand applications, he told me Gevo knows about them, actively monitors them, and continues to be careful and cognizant not to use Butamax’s technology.

This important green patent war is likely to continue in the courtroom and the media.

Three Strikes and Aquatech’s Out as Court Bounces DJ Action Again

September 5th, 2013

 

A previous post discussed Aquatech‘s declaratory judgment (DJ) action against Water Systems and Veolia Water seeking a judgment that U.S. Patent No. 7,815,804 (’804 Patent) is invalid and unenforceable and that Aquatech’s water filtration processes do not infringe the ’804 Patent.

The ’804 Patent is entitled “Method for treating wastewater or produced water” and relates to Veolia’s OPUS process, a high-efficiency water purification technology that uses reverse osmosis to treat industrial waste streams.

Aquatech claims that the defendants have coerced and intimidated its potential partners and customers under threat of patent litigation, particularly with respect to Aquatech’s proposal to use its patented HERO water purification process at a power plant to be constructed by Bechtel and a proposal for a project at the Pio Pico Energy Center.

The court granted defendants’ motion to dismiss Aquatech’s initial complaint for lack of DJ jurisdiction, and subsequently dismissed its amended complaint on the same ground.  Aquatech filed a second amended complaint in March 2013, adding a claim for tortious interference.

Recently, the court for the third time granted defendants’ motion to dismiss for lack of DJ jurisdiction. 

To establish declaratory judgment jurisdiction there must be a “case or controversy,” that is “a substantial controversy between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

According to the court, during the course of the legal proceedings the defendants executed four covenants not to sue, which formed, at least in part, the basis for all three of the court’s decisions.

The second covenant waived defendants’ right to assert any infringement claim related to the proposed Bechtel process.  The third covenant more broadly waived defendants’ right to assert that the patented HERO processes infringe the ’804 Patent.  Finally, the fourth covenant waived defendants’ right to assert infringement claims with respect to the proposed Pio Pico Energy Center process.

The court found that defendants’ “multiple covenants not to sue preclude plaintiffs from maintaining declaratory judgment jurisdiction”  because covenants relate to Aquatech’s HERO process and demonstrate that the defendants believe the process does not infringe the patent-in-suit:

[T]he covenants at issue in this case are written and memorialized and cover both past, present, and future infringement claims with respect to the HERO process generally, and specifically the Bechtel project and Pio Pico Energy Center project processes….the covenants not to sue in this case merely affirm defendants’ repeated assertions that they do not believe that the HERO Patents infringe the ’804 Patent.

Accordingly, the court dismissed Aquatech’s DJ claim of non-infringement because the covenants “moot[s] the basis for declaratory judgment relief.” 

With respect to Aquatech’s DJ claims that the ’804 Patent is invalid and unenforceable, they also had to be dismissed because they are defenses to infringement:

 Without an active case or controversy with respect to defendants’ patent rights in the ’804 Patent, plaintiffs’ claims of invalidity and unenforceability must also be dismissed.  Invalidity and unenforceability are defenses to a claim of infringement.  Until plaintiffs can establish that there is a real and immediate threat that defendants will take action to enforce their rights with respect to the ’804 Patent, plaintiffs cannot continue to assert defenses to such claims.

This decision closes the case on infringement and related defenses for now.  Aquatech could bring another DJ action only if the defendants make new threats of infringement in derogation of the covenants not to sue.