Archive for the ‘Solar Patents’ category

Clean Tech in Court: Green Patent Complaint Update

September 11th, 2014

As with many things, July and August were slow months for green patent litigation.  However, a handful of green patent complaints were filed in the last two months in the areas of solar power, green chemicals, smart meters, and, of course, LEDs.

 

Solar Power

Conlin v. Solarcraft, Inc.

Kevin L. Conlin sued Solarcraft on July 2, 2014 in federal court in Houston, Texas.  The complaint alleges that several patents relating to portable solar power units are invalid or unenforceable due to inequitable conduct.  Conlin further alleges that he should have been named as an inventor on the patents.

The patents-in-suit are:

U.S. Patent No. 7,832,253, entitled “Portable weather resistant gas chromatograph system”

U.S. Patent No. 7,843,163, entitled “Portable weather resistant enclosure”

U.S. Patent No. 7,750,502, entitled “Portable weather resistant flow meter system”

U.S. Patent No. 7,795,837, entitled “Portable solar power supply trailer with a security containment area and multiple power interfaces”

U.S. Patent No. 7,880,333, entitled “Method for weather resistant portable flow metering”

E. I. du Pont de Nemours and Co. v. SunEdison, Inc.

A previous post discussed du Pont’s solar paste patent litigation with Heraeus and another post detailed the parties’ subsequent legal wrangling over a press release and customer letters du Pont wrote about the litigation.

Armed with a new solar paste patent, du Pont has sued SunEdison.  Filed August 21, 2014 in the U.S. District Court for the District of Delaware, Du Pont’s complaint accuses SunEdison of infringing U.S. Patent No. 8,497,420 (’420 Patent).

The ’420 Patent is entitled “Thick-film pastes containing lead- and tellurium-oxides, and their use in the manufacture of semiconductor devices” an directed to a thick-film paste for printing the front-side of a solar cell having one or more insulating layers.  The thick-film paste comprises an electrically conductive metal and a lead-tellurium-oxide dispersed in an organic medium.

Green Chemicals

Koch Agronomic Services, LLC v. Eco Agro Resources, LLC

In this lawsuit over a treatment agent for fertilizer, Koch accuses Eco Agro of infringing U.S. Patent No. 5,698,003 (’003 Patent).  The complaint was filed in the U.S. District Court for the Middle District of North Carolina on August 13, 2014.

The ’003 Patent is entitled “Formulation for fertilizer additive concentrate” and directed to solvent systems for the formulation of certain urease inhibitors. These formulations enable the preparation of stable concentrated solutions for storage, transportation, and impregnation onto solid urea fertilizers and incorporation into liquid urea fertilizers.

According to the complaint, Eco Agro’s N-YIELD product, an environmentally-friendly urease inhibitor used to treat urea-based fertilizers, infringes the ’003 Patent.

Smart Meters

Sensor-Tech Innovations LLC v. CenterPoint Energy Houston Electric, LLC

On July 16, 2014 Sensor-Tech sued CenterPoint for patent infringement in federal court in Marshall, Texas.  According to the complaint, CenterPoint’s Advanced Metering System infringes U.S. Patent No. 6,505,086 (’086 Patent).

Entitled “XML sensor system,” the ’086 Patent is directed to a sensor communication system comprising an array of sensors adapted to transmit sensor data in XML format.

LEDs

Koninklijke Philips N.V.  et al. v. JST Performance, Inc.

Philips has asserted eleven LED patents against JST in an infringement action filed July 23, 2014 in federal court in Orlando, Florida.

According to the complaint, the patents are infringed by JST products in the A-Series, D-Series, E-Series, SR-Series, SR-M, SR-Q, RDS Series, Q-Series, and Wake Flame product lines, and LED products used in LED Lighting Devices such as dome lights, deck lights, driving lights, fog lights, light bars, spotlights, floodlights, diffused lights, and marine lighting products.

The asserted patents are:

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

U.S. Patent No. 6,561,690, entitled “Luminaire based on the light emission of light-emitting diodes”

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

U.S. Patent No. 6,692,136, entitled “LED/phosphor-LED hybrid lighting systems”

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

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

U.S. Patent No. 6,967,448, entitled “Methods and apparatus for controlling illumination”

U.S. Patent No. 7,030,572, entitled “Lighting arrangement”

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

U.S. Patent No. 7,348,604, entitled “Light-emitting module”

U.S. Patent No. 7,566,155, entitled “LED light system”

 

Seoul Semiconductor Co. v. Curtis International Ltd.

Filed July 22, 2014 in the U.S. District Court for the Southern District of Florida, Seoul’s 7-patent complaint accuses Curtis’s LED televisions sold under the Proscan brand name of infringement.

The following patents are listed in the complaint:

U.S. Patent No. 8,314,440, entitled “Light emitting diode chip and method of fabricating the same”

U.S. Patent No. 7,964,943, entitled “Light emitting device”

U.S. Patent No. 7,626,209, entitled “Light emitting diode having active region of multi quantum well structure”

U.S. Patent No. 7,572,653, entitled “Method of fabricating light emitting diode”

U.S. Patent No. 6,942,731, entitled “Method for improving the efficiency of epitaxially produced quantum dot semiconductor components”

U.S. Patent No. 6,473,554, entitled “Lighting apparatus having low profile”

U.S. Patent No. 6,007,209, entitled “Light source for backlighting”

Can Ultrasolar’s Patented Pyrotechnics Boost Solar Cell Efficiency?

September 18th, 2013

Ultrasolar Technology is a Silicon Valley startup that has developed a pyroelectric device to boost solar cell efficiency.

We all know what “pyro” means, but what is “pyroelectric” all about?  According to this Greentech Media piece, which provides a helfpul overview of Ultrasolar’s methodology, “[p]yroelectricity converts heat to [an] electric field.”

One of Ultrasolar’s patents says this:

Pyroelectric materials may generate electrical energy (e.g., temporary voltage) when they are subjected to a change in temperature (e.g., heated or cooled).

More to the point, Ultrasolar’s technology draws “hot” electrons, which would normally lose their energy in the crystal structure of the solar cell, to the solar cell’s electrodes, thereby increasing the power produced from the cell (and the modules).

Ultrasolar owns at least five U.S. patents and applications relating to its pyroelectric technology.  According to Cleantech PatentEdge™, the company also owns two international, or PCT, applications.

U.S. Patent Application Publication No. 2011/0232734 is entitled “Pyroelectric solar technology apparatus and method” and directed to methods of increasing solar cell efficiency by depositing pyroelectric film on a cell (’734 Application).

In its basic embodiment, the ’734 Application describes a solar cell (102) having a transparent pyroelectric film (104) on its front surface and an opaque pyroelectric film (106) on its back surface.  The transparent pyroelectric film (104) may be applied onto a resistor (108) placed on the front surface of the cell, and an ohmic contact (110) placed on the transparent film (104).

According to the ’734 Application, heating of the transparent pyroelectric film (104) and/or the opaque pyroelectric film (106) generates an electromotive force to bias the solar cell (102), thereby creating an open circuit voltage.  Moreover, heat from the sun or waste heat can cause current in the pyroelectric material (104, 106), thus increasing the total current of the solar cell (102).

According to U.S. Patent No. 8,324,783, the pyroelectric material may produce electric charge when subjected to a change in temperature over time.

The ’734 Application explains that a temporal temperature gradient may be generated on the solar cell (102) through a standing infrared wave through the pyroelectric films or using pyroelectric films of varying specific heats and conductivities at a front and/or back of the solar cell.

What are these pyroelectric materials that seem so promising?  The ’734 Application lists a bunch:

In one or more embodiments, transparent pyroelectric film 104 may comprise of a polyvinylidene fluoride, a tri-glycerin sulphate, a lead zirconatetitanate, a stannic titanate, a lithium tantalate, lithium niobate, aluminum nitride, titanium aluminum nitride, barium titanate, and/or barium strontium titanate. In one or more embodiments, opaquepyroelectric film 106 may comprise of a polyvinylidene fluoride, a tri-glycerin sulphate, a lead zirconatetitanate, a stannic titanate, a lithium tantalate, lithium niobate, aluminum nitride, titanium aluminum nitride, barium titanate, and/or barium strontium titanate.

The Greentech Media story says Ultrasolar is hoping to use these pyroelectric materials to boost solar module efficiency by 20 percent.

Green Patent Acquisitions: Dow Meshes with NuvoSun

March 18th, 2013

 

Thin-film solar startup NuvoSun was recently acquired by Dow Chemical.  Founded in 2008 by former MiasSole CEO Dave Pearce, NuvoSun designs PV cells and modules based on flexible Copper Indium/Gallium di- Selenide (CIGS) technology.

NuvoSun owns at least two pending U.S. patent applications, Publication Nos. 2011/0300661 (’661 Application) and 2012/0174967 (’967 Application).  The ’661 Application is entitled “Solar cell interconnection method using a flat metallic mesh” and directed to methods of interconnecting thin film solar cells using metallic meshes.

Both grids (2a, 3a) of the flat metallic mesh incude a solid region, or tab (4), to make the interconnection between solar cells, and a mesh region (5), which forms the current collecting grid.  The mesh region (5) includes connected wire-like elements (6) with square or rectangular cross sectional shape.

Mesh region (5) has open patterns that may range from narrow diamonds (2a) to nearly perfect squares (3a).  According to the ’661 Application, an advantage of this invention is that from any point in the mesh there are multiple paths to the tab (4) whereas for conventional grids there is only a single line.  Therefore, the net resistance for the mesh is lower than for conventional grids of similar geometry.

The ’967 Application is entitled “Photovoltaic modules and mounting systems” and directed to PV modules including a support member (300) for supporting one or more PV cells.  The support member (300) includes hexagonal though holes (301).  A slot (304) defined in the support member (300) accepts an electrical attachment member for coupling a PV module to an electrical bus bar.

The ’967 Application also describes and claims a mounting frame (800) including two outer horizontal support members (801), an inner horizontal support member (802), a support member (803) orthogonal to the outer and inner support members, and vertical support members (804).  The  innter horizontal support member (802) is configured to hold an electrical bus bar.

According to this Greentech Media article, the NuvoSun technology is probably “destined for Dow’s solar shingles,” the building-integrated PV product Dow has been promising.

New Lawsuit to Decide Fairness of Solar Paste Patent PR

March 14th, 2013

In an interesting case of ancillary legal wrangling, DuPont has filed a declaratory judgment (DJ) action asking an Oregon federal court to declare that the company’s press release and customer letters about its patent infringement suit against Heraeus Precious Metals (Heraeus) does not violate unfair competition laws.

The DuPont DJ complaint describes a dispute arising from a press release and customer letters the company disseminated shortly after suing Heraeus for infringement of U.S. Patent No. 8,158,504 (’504 Patent) in Portland, Oregon in June 2012 (see the complaint here).  The ’504 Patent is entitled “Conductive compositions and processes for use in the manufacture of semiconductor devices – organic medium components.”

DuPont also sued Heraeus back in September 2011 in Delaware for infringement of U.S. Patent No. 7,767,254, entitled “Paste for solar cell electrode and solar cell” (see the complaint here).

According to the DJ complaint, the press release at issue, dated July 19, 2012, stated:

The company recently filed two lawsuits against PV metallization paste supplier Heraeus and one against its customer Solar World, for infringing on DuPont patents for DuPont Solamet PV metallization pastes.

The customer letters said that:

DuPont Microcircuit Materials has recently filed two lawsuits in the U.S. against PV paste supplier Heraeus for infringing on its patents for Solamet photovoltaic metallization pastes and one against its customer SolarWorld for using “infringing” materials.

Both the press release and the letters editorialized as follows:

Intellectual Property (IP) theft [] is widespread and the issue seems to be growing in the current climate of [this] industry.  [IP theft] has the potential to threaten the [PV] industry broadly at a critical time in its development.

According to the DJ complaint, in the Oregon patent infringement suit Heraeus filed a counterclaim against DuPont for unfair competition, asserting that the statements in the press release and customer letters were false and misleading. 

The counterclaim was subsequently dismissed, but the DJ complaint says that Heraeus’s counsel recently told DuPont that Heraeus intended to assert an unfair competition claim in the Delaware court.

This is not the first time ancillary litigation has erupted over PR in connection with a green patent infringement suit.  Several years ago, Nichia sued its LED rival Seoul Semiconductor for false advertising when Seoul disseminated press releases saying it had “substantially prevailed” in its litigation with Nichia, when in fact, it was found to have infringed four Nichia design patents.

Green Patent Lit Report: Neste Stayed Pending Reexam; Solannex Consolidated, Not Certified

February 19th, 2013

There have been some recent developments in the green patent infringement suits we’ve been covering.

 

First, in Neste Oil v. Dynamic Fuels, Syntroleum and Tyson Foods (see previous post here) the U.S. District Court for the District of Delaware granted defendant Syntroleum’s motion to stay the litigation pending reexamination of the asserted patent by the U.S. Patent and Trademark Office (PTO). 

The patent-in-suit is U.S. Patent No. 8,187,344 (’344 Patent), entitled “Fuel composition for a diesel engine” and directed to diesel fuels made from animal, plant, or fish fatty acids.

The court acknowledged that delayed resolution of the case under reexam could prejudice Neste.  However, ultimately the court found the likelihood of simplifying the issues for litigation and the early stage of the court proceedings weighed in favor of a stay:

[T]here is reason to believe that the PTO’s reexamination will result in the cancellation of at least some of the claims.  To the extent that such cancellation does occur…the litigation necessarily will be simplified.

* * *

The present case is in its earliest stages –”the reexamination request was filed prior to any scheduling order being in place, less than three months after litigation began, and before Defendants’ answers were due, and where the parties have incurred little, if any, resources with respect to scheduling, discovery disputes, or motion practice.”

One important consideration was the fact that a related Neste patent – U.S. Patent No. 7,279,018 – had all of its claims canceled in a prior PTO reexamination.

 

In Solannex v. Miasole, the U.S. District Court for the Northern District of California consolidated two separate infringement actions involving solar cell interconnection structures (see previous posts here and here).

The cases involve four patents:

U.S. Patent No. 7,635,810, entitled “Substrate and collector grid structures for integrated photovoltaic arrays and process of manufacturing such arrays” (’810 Patent);

U.S. Patent No. 7,868,249, entitled “Substrate and collector grid structures for integrated series connected photovoltaic arrays and process of manufacture of such arrays” (’249 Patent);

U.S. Patent No. 8,076,568, entitled “Collector grid and interconnect structures for photovoltaic array and modules” (’568 Patent); and

U.S. Patent No. 8,110,737, entitled “Collector grid electrode structures and interconnect structures for photovoltaic arrays and methods of manufacture” (’737 Patent).

The court denied the parties’ motion under Federal Rule 54(b) to certify for appeal a stipulated judgment of non-infringement of the ’810 and ’249 Patents.  Because claim construction has not yet occurred for the ’568 and ’737 Patents, the court held it was premature for appeal of the rulings on the ’810 and ’249 Patents:

Claim construction for the ’568 and ’737 patents has not yet taken place.  If the court were to certify the claim construction of the ’810 and ’249 patents, it is likely that the parties would appeal claim construction of the same terms at a later date, requiring the appellate court to decide the same issues – or at least similar – more than once.  Because this is exactly the type of piecemeal appeal Rule 54(b) was designed to prevent, the parties joint request for entry of judgment and certification must be denied.

Clean Tech in Court: Green Patent Complaint Update

September 18th, 2012

 

A number of green patent complaints have been filed in the last several weeks in the areas of biofuels, LEDs, and solar mounting systems.

 

Biofuels

Gevo, Inc. v. Butamax Advanced Biofuels LLC

Butamax Advanced Biofuels LLC v. Gevo, Inc.

Add another two actions to the mega-litigation between these advanced biofuels rivals.   On August 13, 2012 Gevo filed another declaratory judgment action, this time for invalidity and non-infringement of Butamax’s U.S. Patent No. 8,241,878 (’878 Patent). 

The ’878 Patent is entitled “Recombinant yeast host cell with Fe-S cluster proteins and methods of using thereof” and directed to methods for the conversion of 2,3-dihydroxyisovalerate to alpha-ketoisovalerate using recombinant yeast host cells expressing a heterologous dihydroxy-acid dehydratase (DHAD) protein.  Gevo’s complaint was filed in federal court in Marshall, Texas.

Butamax fired back the next day with a patent infringement complaint in the District of Delaware asserting the ’878 Patent. 

These latest complaints bring the total number of actions between Gevo and Butamax to 12, with 10 patents asserted.

 

Danisco US Inc. v. Novozymes A/S

Filed August 27, 2012 in the Northern District of Iowa and the Northern District of California, Danisco’s complaint (see the Cal complaint here) seeks a declaratory judgment that the company’s Rapid Starch Liquefaction alpha-amylase products do not infringe Novozymes’s U.S. Patent No. 8,252,573 (’573 Patent) and that the ’573 Patent is invalid. 

In the alternative, Danisco is asking the court for a determination that its U.S. Patent No. 8,084,240 (’240 Patent) has priority over the ’573 Patent.  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 substitution of glutamic acid for proline at position 188.

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 containing a substitution of glutamic acid for proline at position 188 and exhibiting increased viscocity reduction in a starch liquefaction assay.

Danisco asserts that the named inventors on the ’240 Patent conceived of and reduced to practice the invention before Novozymes filed any patent claim to the Geobacillus stearothermophilus alpha-amylase variant.

Last year, Novozymes won an $18 million jury verdict against Danisco for infringement of a patent directed to certain alpha amylase variants.

 

LEDs

Lexington Luminance LLC v. Lighting Science Group Corp.

Lexington Luminance LLC v. Osram Sylvania Inc.

Lexington Luminance LLC v. Feit Electric Company, Inc.

In three actions filed on August 21, 2012 in the District of Massachusetts, Lexington Luminance accuses Lighting Science Group (Lexington-LSG Complaint), Osram Sylvania (Lexington-Osram Complaint) and Feit Electric Company (Lexington-Feit Complaint) of patent infringement. 

The asserted patent, U.S. Patent No. 6,936,851, is entitled “Semiconductor light-emitting device and method for manufacturing same” and directed to an LED device having a lattice mismatch system of etched trenches in the substrate and a layer including inclined lower portions to guide lattice defects away from propagating into the active layer of the LED.

The accused products are Lighting Science’s EcoSmart 8-watt GP19 and A19 LED bulbs, Sylvania’s 8-watt A19 LED bulb, and Feit’s 7.5 watt A19 and Utilitech Pro LED bulbs.

 

Cooper Lighting, LLC v. Cree, Inc. et al.

Georgia-based Cooper Lighting filed this patent infringement action against North Carolina LED maker Cree and Wisconsin-based Ruud Lighting on September 7, 2012 in federal court in Atlanta. 

The complaint alleges infringement of U.S. Patent No. 8,210,722, entitled “LED device for wide beam generation” and directed to an LED apparatus including an LED in a plane, an optic having a first lobe and a second lobe wherein the optic is oriented with respect to the LED such that the first lobe is on a first side of the plane and the second lobe is on the second side of the plane, wherein the optic is operable to receive light emitted by the light emitting diode and is operable to form the received light into a three-dimensional distribution of light that the plane intersects.

 

Solar  Mounting Systems

Sunmodo Corp. v. Unirac, Inc.

This declaratory judgment action was filed by a Washington state solar rack and mounting company called Sunmodo against its New Mexico competitor Unirac.  The complaint, filed August 8, 2012 in federal court in Tacoma, Washington, requests a declaratory judgment that Sunmodo’s Ez Roof Mount does not infinge U.S. Patent No. 8,128,044 (’044 Patent) and that the ’044 Patent is invalid.

The ’044 Patent is entitled “System for mounting a photovoltaic module to a surface” and directed to a system for mounting a photovoltaic module to a surface comprising a rail with at least two tracks, each having a channel, the rail being removably mountable to a footing grid, a plurality of keepers on which to mount the rail, and one or more clamps for connecting a photovoltaic module to the rail.

According to the complaint, Unirac’s counsel sent Sunmodo a letter in May entitled “Infringement of the U.S. Patent No. 8,128,044″  in which Unirac alleged that the Ez Roof Mount infringes the ’004 Patent, and the letter included a claim chart comparing elements of the product with claims of the ’044 Patent.

Green Off-Patent Report (Powered by CleanTech PatentEdge)

September 14th, 2012

 

Our Green Off-Patent Report provides selected highlights of green patents which have completed their 20-year terms and recently expired or will complete their terms and expire within the next week or so (assuming the patentee paid all requisite maintenance fees; U.S. patents require payment of fees 3 1/2, 7 1/2, and 11 1/2 years after issuance to stay in force).

Many of the green technologies in use today are off-patent, i.e., the patents covering the technologies have run their 20-year term and expired. 

Knowing which technologies are off-patent is important because those technologies are in the public domain and can be exploited by anyone.  It’s also interesting because it provides a window into what was cutting edge technology twenty years ago.

The green off-patent searching is performed by Cleantech PatentEdge™.

U.S. Patent No. 5,411,767, entitled “Method for producing interconnector for solid electrolyte type fuel cell” and directed to a method for producing interconnectors for electrically connecting unit cells of a solid electrolyte type fuel cell wherein an interconnector material such as a perovskite complexed oxide is thermally sprayed onto the surface of an electrode of a solid electrolyte type fuel cell by a plasma thermal spraying process.  Filed September 8, 1992; issued May 2, 1995; expired September 8, 2012.

U.S. Patent No. 5,406,154, entitled “Power unit for motor vehicles” and directed to a power unit for a motor vehicle having an electric motor including a heat sink detachably connected to a motor case, switching elements for switching an electric current to be supplied to the electric motor, a cover member for the switching elements, and resin to fix the heat sink to motor case.  Filed September 2, 1992; issued April 11, 1995; expired September 2, 2012.

U.S. Patent No. 5,388,025, entitled “Rechargeable electrical energy storage device having organometallic electrodes” and directed to a rechargeable electrical energy storage device comprising an electrochemical cell having two electrodes constructed of a similar organometallic compound whereby the electrodes are electrically connected by an ion carrying electrolyte and physically separated by a barrier that will pass the ions but not electrons.  Filed September 1, 1992; issued February 7, 1995; expired September 1, 2012.

U.S. Patent No. 5,355,747, entitled “Flywheel assembly” and directed to a flywheel assembly comprising a first flywheel connectable to an engine, a second flywheel, and an inter-flywheel viscous damping mechanism providing viscous damping of flywheel torsional vibrations.  Filed September 1, 1992; issued October 18, 1994; expired September 1, 2012.

U.S. Patent No. 5,340,665, entitled “Creep resistant, metal-coated LiFeO2 anodes for molten carbonated fuel cells” and directed to a porous, creep-resistant, metal-coated, LiFeO2 ceramic electrode for fuel cells useful for molten carbonate fuel cells and solid oxide fuel cells.  Filed September 3, 1992; issued August 23, 1994; expired September 3, 2012.

U.S. Patent No. 5,334,259, entitled “Amorphous silicon solar cell and method of manufacture” and directed to a method of amorphous silicon solar cell manufacturing comprising forming thin films of a transparent electrode material, amorphous silicon, and a backside electrode on a transparent substrate, using an alkali resistant metal for the backside electrode, and employing wet-etching to open holes that penetrate through the backside electrode and amorphous silicon layers.  Filed September 10, 1992; issued August 2, 1994; expired September 10, 2012.

U.S. Patent No. 5,327,991, entitled “Exhaust gas purifying method and apparatus for a hybrid car” and directed to an exhaust gas purifying apparatus for a hybrid car wherein the internal-combustion engine is equipped with a catalyst installed in an exhaust pipe for purifying exhaust gas and a heater for heating the catalyst under the control of the controller to enhance its catalytic action.  Filed September 2, 1992; issued July 12, 1994; expired September 2, 2012.

U.S. Patent No. 5,316,592, entitled ”Solar cell roofing assembly” and directed to a solar roofing assembly comprising a roofing membrane, a plurality of insulation blocks disposed as a continuous layer on top of the roofing membrane, and a plurality of photovoltaic modules directly on top of the insulation blocks, whereby the photovoltaic modules serve as ballast for the insulation and membrane layers.  Filed August 31, 1992; issued May 31, 1994; expired August 31, 2012.

U.S. Patent No. 5,314,072, entitled “Sorting plastic bottles for recycling” and directed to an apparatus and method for sorting plastic bottles for recycling by parameters such as whether the bottle is clear, colored, contains chlorine, and has a small or large diameter.  Filed September 2, 1992; issued May 24, 1994; expired September 2, 2012.

U.S. Patent No. 5,300,373, entitled “Electrochemical cell stack and method of making an electrochemical cell stack” and directed to an electrochemical cell stack made from a continuous laminate web fan-folded into a stack and including an electrode layer, an electrolyte layer, and a plurality of discrete opposite polarity electrode segments connected by current collector strips.  Filed September 11, 1992; issued April 5, 1994; expired September 11, 2012. 

U.S. Patent No. 5,296,045, entitled “Composite back reflector for photovoltaic device” and directed to a photovoltaice device having a composite back reflector on a substrate, the reflector including an electrically conducting, texturizing layer disposed on the substrate, a light reflecting layer conformally disposed on the texturizing layer, and photovoltaic material disposed on the composite back reflector.  Filed September 4, 1992; issued March 22, 1994; expired September 4, 2012.

DuPont: Green Chemistry and Sustainability Efforts in Action

August 21st, 2012

According to the EPA, “green chemistry” is defined as:
“…The design of chemical products and processes that reduce or eliminate the use or generation of hazardous substances. Green chemistry applies across the life cycle of a chemical product, including its design, manufacture, and use.”

DuPont owns countless patent and patent applications that would fall under the “green chemistry” definition, but unbeknownst to some, green chemistry has been an integral part of DuPont’s business strategy since the company began.

DuPont began in 1802 on the Brandywine River in Delaware. What started out as a gunpowder company with only 40 employees grew to be one of the nation’s largest companies. As an initial producer of explosives, the company was concerned with safe business practices and product stewardship starting on day one.

“It’s built into the company’s DNA,” Dr. Henry Bryndza, Director of Bio-Chemical Sciences and Engineering at DuPont noted. DuPont expanded rapidly within its first century of commercialization and continued its commitment to employee and consumer health and safety; the company established the first industrial toxicology lab in North America, dedicated to product stewardship.

In the early 1990’s, convinced that environmental stewardship went hand-in-hand with good business practices, DuPont created a set of environmental goals to be reached by 2010. By 2006, under the guidance of CEO Chad Holliday, the company had met or exceeded all of the goals, and set new goals for 2015.

Holliday realized that it was imperative to find a more sustainable way for the company and its customers to grow. He helped shape the role of research and development to one that focused on alternatives that were sustainable. DuPont abides by eleven criteria for every research project it takes on, ranging from climate change, energy use, and water consumption, to use of depleting resources.

“Green chemistry and its principles are involved in everything we do, whether it’s the next generation of drought resistant seeds, non-global warming refrigerants, or renewable polymers,” explained Bryndza.

So let’s take a closer look at a green product that’s currently in the works at DuPont: Solamet® metallization pastes. DuPont Solamet® photovoltaic metallization pastes are used in manufacturing solar cells and are designed to raise their efficiency.

The pastes are protected by a variety of patents, including composition patents that cover silver compositions that are used on the front side of solar cells and aluminium compositions used on the back side surface, for example US Patent No. 8,158,504, entitled Conductive Compositions and Processes for use in the Manufacture of Semiconductor Devices–Organic Medium Components.

“DuPont is a leading innovator of photovoltaic (PV) metallizations, sold under the Solamet(r) brand, which have been instrumental in nearly doubling the efficiency of solar cells over the past dozen years,” said Peter Brenner, global photovoltaics marketing manager, DuPont Microcircuit Materials.

“DuPont has been granted nearly 200 patents related to photovoltaic applications globally since the start of 2008, and we have over thirteen hundred patent applications pending in this area globally. We spend hundreds of millions of dollars each year focused on advancing the efficiency, lifetime and cost competitiveness of solar energy to reduce global dependence on fossil fuels, and as we continue to develop new technology, we need to ensure it is protected.”

DuPont Microcircuit Materials recently filed two lawsuits against PV paste supplier Heraeus and one against its customer SolarWorld, for infringing on DuPont patents for Solamet® photovoltaic metallization pastes.

“We do not ignore theft and infringement and we will aggressively pursue other points in the supply chain where IP theft and infringement exists, including the production and sale of downstream products which incorporate ‘infringing’ materials by cell and module makers, as well as PV system developers, installers and owners,” stated Brenner.

Patent infringement in the clean tech industry is a hot issue, especially since research and development occur so rapidly. However, DuPont is sure to produce many interesting products in the upcoming decades, all while staying true to sustainable business practices.

* Rosemary Ostfeld is a contributor to Green Patent Blog.  Rosemary recently completed both her undergraduate and graduate education at Wesleyan University in Middletown, Connecticut.  She will be studying Environmental Policy at the University of Cambridge this fall.

To Preserve or Recycle: Konarka and the Treatment of IP Rights in Bankruptcy

July 24th, 2012

 

As the number of green technology bankruptcies continues to rise, an important consideration for these companies, their business partners, and their creditors is the treatment of IP rights in bankruptcy. 

For example, with companies engaged in new research and development, often through collaborations with other companies, how does the bankruptcy process effect the estate’s IP rights?  And how might the bankruptcy effect the rights of its licensees and development partners? 

The topic recently came to mind, with reports regarding the bankruptcy of Konarka Technologies, Inc. (“Konarka”).

I.  The Konarka Bankruptcy

Konarka, which declared bankruptcy in June, was a pioneer in the area of thin-film organic photovoltaic materials, which might be used in any number of ways, including for clothes or bags, textiles for curtains, and even building materials. 

Konarka’s technology web page explains its technology as follows:

[a]t the heart of Konarka’s technology is a photo-reactive polymer material invented by Konarka co-founder and Nobel Prize winner, Dr. Alan Heeger.  This proprietary material can be printed or coated inexpensively onto flexible substrates using roll-to-roll manufacturing, similar to the way newspaper is printed on large rolls of paper.

With respect to its bankruptcy, Konarka’s press release noted the company’s assets include a lot of IP in addition to its manufacturing facility:

Among the Company’s assets are over hundreds of owned and licensed patents and patent applications in the field of solar energy and a state-of-the-art manufacturing plant in New Bedford, Massachusetts.

Press releases and articles suggest that Konarka made a serious and continued effort to develop and commercialize its innovative materials. 

For example, Konarka had taken exclusive licenses on IP concerning photovoltaic applications and photoactive polymers from (respectively) DuPont Displays (in 2007) and Université Laval (in 2008). 

Further, Konarka’s polymer-based, organic photovoltaic (OPV) technology had been incorporated into a number of products, including solar energy bags (with Neuber’s Energy), curtain walls (with Arch Aluminum & Glass), as well as roofs, skylights, and facades (with ThyssenKrupp Steel Europe).

II.  Protection for IP Licensees

Normally, bankruptcy raises red flags for any company that’s in business with the company seeking bankruptcy protection. 

Generally speaking, a bankruptcy trustee has the right to accept (and thereby assume) or terminate (and thereby reject) the company’s executory contracts.  An executory contract is a contract that has on-going performance obligations, such as a business lease, a service contract,  equipment leases, development contracts, and intellectual property licenses. 

So while the other party has to keep performing, the bankruptcy trustee has the option of terminating an agreement that might be very important to your company’s well-being.  (And if the trustee does terminate, the other party is left with an unsecured bankruptcy claim  for breach of contract, which is likely a poor alternative for a material lease, equipment rental, license, or some other right.)

Fortunately, there is some measure of relief for IP licensees.  In a 1985 decision called Lubrizol Enterprises  v. Richmond Metal Finishers, the Fourth Circuit Court of Appeals confirmed that non-exclusive licenses are executory contracts, which a bankruptcy trustee may reject.   

The Fourth Circuit also held that the former licensee didn’t have any right to seek specific performance under the license. 

In response to the Lubrizol decision, Congress adopted Section 365(n) of the Bankruptcy Act, which provides that a licensee may elect:

(A)   to treat such contract as terminated by such rejection if such rejection by the trustee amounts to such a breach as would entitle the licensee to treat such contract as terminated by virtue of its own terms, applicable nonbankruptcy law, or an agreement made by the licensee with another entity; or

(B)   to retain its rights (including a right to enforce any exclusivity provision of such contract, but excluding any other right under applicable nonbankruptcy law to specific performance of such contract) under such contract and under any agreement supplementary to such contract, to such intellectual property (including any embodiment of such intellectual property to the extent protected by applicable nonbankruptcy law), as such rights existed immediately before the case commenced, for—

                                 i.      the duration of such contract; and

                                 ii.      any period for which such contract may be extended by the licensee as of right under applicable nonbankruptcy law.

Section 365(n) is quite remarkable, in that it is a significant exception from the bankruptcy trustee’s typical authority and is an important protection for IP licensees. 

There are some important caveats to consider, however, before relying on the protections of Section 365(n).  First, the Bankruptcy Act’s definition of “intellectual property” does not include trademarks (it does include trade secrets, patents, patent applications, plant variety, copyrights, and mask works). 

Second, Section 365(n) presumably does not prevent the termination of related rights or obligations, such as enforcement agreements, technology transfers, and service agreements. 

Third, Section 365(n) does not automatically apply to licenses by foreign licensors (even if it’s a license of U.S. patents). 

Fourth, and lastly, Section 365(n) does not say IP licenses aren’t terminable.  It instead says that, if the bankruptcy entity seeks to terminate the license, a licensee may elect to retain its rights.  And since this implicates an affirmative action, it’s important that a licensee monitor its licensor’s bankruptcy, to determine whether it becomes necessary to make an appearance to protect its rights.

With respect to Konarka, we’ll continue to monitor the bankruptcy proceeding and report back here, as the bankruptcy plan is published and we learn whether and how Konarka plans to dispose of its substantial patent portfolio (and whether licensees step in to preserve any rights).

Adrian Mollo is a Partner in the Washington office of McKenna Long & Aldridge.  Mr. Mollo’s practice focuses on patent licensing, strategic patent planning, intellectual property due diligence, related corporate counseling, and intellectual property litigation.

 

More Downstream Solar Patent Lit: SolarDock Sues Former Disciples of the Mount

July 17th, 2012

Blue Sunny Skies and Sun Energy Partners f/k/a McConnell Energy Solutions and d/b/a SolarDock is a Delaware company that makes solar module mounting systems.

SolarDock owns U.S. Patent No. 6,968,654, entitled “Solar panel mounting structure, solar panel system, and methods of making and installing thereof” (’654 Patent).

In a recent complaint filed in federal court in Delaware, SolarDock accused, inter alia, PV Thermal Solar, MJM Fabrications (MJM) and Dave Lewenz (a former independent contractor for SolarDock) of infringing the ’654 Patent.

According to SolarDock’s Complaint, Michael Moulder, a co-inventor named on the ’654 Patent, assigned the patent to McConnell Energy Solutions (which subsequently assigned it to Blue Sunny Skies) and later formed MJM, which is making infringing SolarDock systems.

SolarDock also alleges that PV Thermal Solar, co-founded by Lewenz and Moulder, is selling infringing solar racking systems:

Further upon information and belief, PV, through its division SR2, used SOLARDOCK’S proprietary and confidential information to create racking systems that compete directly with the SolarDock system and fall within the scope of one or more claims of the ’654 patent.  Such racking systems include SR2′s SolarRac2 system.

The ’654 Patent is directed to a solar panel unit (100) comprising a mounting structure (10) and a solar panel (P) supported by the mounting structure. 

The frame (12) of the mounting structure (10) includes a front wall (20), a bottom wall (22), and a back wall (24) forming an elongated chamber (26).  First and second panel supports (30, 32) support the panel (P).

The front wall (20) of the mounting structure (10) is arranged to face a direction of the predominant supply of sunlight, and the inclination angle (α) of the mounting structure (10) can be preselected according to the latitude of the installation site.

According to the ’654 Patent, the panel unit’s simple design confers several advantages.  First, it makes the unit easy and inexpensive to manufacture.  In addition, installation is quick and easy and requires minimal skill.  Finally, the mounting structure is very light in weight and can be transported easily by a single technician.

This case is another recent example of solar patent litigation moving downstream to disputes over mounting systems.  A major patent war between Zep Solar and Westinghouse Solar (formerly Akeena Solar) recently settled.