Archive for the ‘Wind Patents’ category

Clean Tech in Court: Green Patent Complaint Update

October 6th, 2017

Several new green patent complaints were filed in July and August in the areas of advanced batteries, electrolyzers for sewage treatment, LED lighting, eco-friendly pet products, solar powered trash compactors, and wind turbines.

 

Advanced Batteries

Somaltus LLC v. Universal Power Group

Somaltus LLC v. Tenergy Corporation

Somaltus LLC v. Maxim Integrated Products, Inc.

On July 26, 2017 Somaltus, a non-practicing entity, filed three patent infringement lawsuits against Universal Power Group (Somaltus v. Universal Power Group), Tenergy (Somaltus LLC v. Tenergy Corporation), and Maxim Integrated Products (Somaltus LLC v. Maxim Integrated Products Inc.).  The complaints were filed in U.S. District Court for the District of Delaware.

Each 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 Universal Power Group’s 24 v 8 amp Premium Quality Heavy Duty XLR 3-pin off-board Sealed AGM, GEL Universal 24BC8000T-1 battery charger, Tenergy’s T-9688 Universal 4 By NiMh/NiCd Smart Chargers, and Maxim’s Max77301 JEITA-Compliant Li+ Charger with Smart Power Selector.

 

Marine Sewage Treatment

DeNora Water Technologies Texas, LLC v. H2O, Inc.

This lawsuit involves bookcell electrolyzer technology used for oxidizing sewage.

The asserted patent is U.S. Patent No. 6,379,525, entitled “Enhanced electrolyzer” and directed to an electrolyzer including a housing having an inlet and an outlet at a common end.  Within the housing are disposed electrode elements, a passageway that connects the inlet to the outlet, and a divider is disposed in the passageway between the inlet and outlet. The divider causes fluid entering the inlet to flow through one section of the passageway and then through another section of the passageway before exiting through the outlet.

The complaint was filed August 17, 2017 in federal court in Houston, Texas, and lists Defendant’s multi-pass bookcell electrolyzers as the accused products.

 

LEDs

Bitro Group Inc. v. Advanced Lighting Concepts, Inc.

Bitro sued Advanced Lighting Concepts (ALC) August 24, 2017 in U.S. District Court for the District of New Jersey asserting infringement of U.S. Patent No. 9,113,558 (‘558 Patent).

The ‘558 Patent is entitled “LED mount bar capable of freely forming curved surfaces thereon” and directed to an LED tape light strip with a structure that allows it to be bent in the direction of its width so it can be used for lighting that must conform to unique shapes.

The accused product listed in Bitro’s complaint is Defendant’s CurrentControl Bendable ZigZag LED Strip Light.

 

Blackbird Tech LLC v. Ontel Products Corporation

Filed August 23, 2017 in U.S. District Court for the District of New Jersey, Blackbird’s complaint alleges that Ontel Products infringes U.S. Patent No. 6,883,927 (‘927 Patent).

Entitled “Frame assembly and light for an electrical wall conduit,” the ‘927 Patent is directed to a frame assembly for covering a wall conduit having a connection to electrical power.  The frame assembly comprises a light powered by an electrical circuit connected to the connection and a frame for housing the light.  The frame has an opening allowing access to the component through the frame, a side and an aperture in the side allowing the light to illuminate a space outside the frame assembly through the aperture.

The accused products are Ontel’s Night Angel electrical wall outlet covers.

 

Document Security Systems, Inc. v. Lite-On, Inc. et al.

Document Security Systems (DSS) filed this lawsuit against Lite-On August 15, 2017 in U.S. District Court for the Central District of California asserting three LED patents.

The complaint contains a long list of accused products, e.g., many of Lite-On’s PLCC Series LED products, including both single color and multi-color lights.

The asserted patents are:

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

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

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

 

Technical LED Intellectual Property, LLC v. Osram Sylvania Inc.

Technical LED IP sued Osram on August 9, 2017 for alleged infringement of two patents relating to phosphor-based LED lights.  The complaint was filed in U.S. District Court for the District of Delaware.

The asserted patents are U.S. Patent Nos. RE41,685 (‘685 Patent) and 6,373,188 (‘188 Patent).

The ‘685 Patent is entitled “Light source with non-white and phosphor-based white LED devices, and LCD assembly” and directed to a light source incorporating phosphor-based white and non-white LEDs, which may be raised off the floor of the optical cavity to permit light to be emitted from the base of the LED.  A reflective protrusion may be placed beneath the raised LED to aid in redirecting light forward, and the LEDs may be skewed in relation to adjacent LEDs to reduce interference.

Entitled “Efficient solid-state light emitting device with excited phosphors for producing a visible light output,” the ‘188 Patent is directed to a solid-state light emitting device in which phosphors excited by radiation produce visible light.  The efficiency of the device is increased by providing a reflector adjacent to the phosphor layer for reflecting at least some of the radiation that passes through the phosphor back into the phosphor. The reflector may also reflect at least some of the visible light that is emitted by the phosphor toward a designated light output.

The accused products include, among others, Osram’s LEP-2100-840-HD-C,  LEP-2100-930-HD-C, LEP-800-840-HD-C, LEP800-930-HD-C, LED12A19/DIM/F/927, LCW CP7P-KPKR-5R8T, and LE CW E3B-NYPZ-QRRU models.

 

Green Pet Products

The Green Pet Shop Enterprises, LLC v. Unique Petz, Inc.

The Green Pet Shop Enterprises, LLC v. C&A Marketing, Inc.

The Green Pet Shop Enterprises, LLC v. European Home Design, LLC

The Green Pet Shop Enterprises, LLC v. Telebrands Corporation

These lawsuits involve pet pad technology that cools your pets without water or electricity.  These four complaints were filed August 16 and 17, 2017 in federal court in New Jersey and New York (THE GREEN PET SHOP ENTERPRISES, LLC v. C&A MARKETING, INC.; The Green Pet Shop Enterprises, LLC v. European Home Design, LLCTHE GREEN PET SHOP ENTERPRISES, LLC v. TELEBRANDS CORPORATIONThe Green Pet Shop Enterprises, LLC v. Unique Petz, Inc.).

The asserted patents are U.S. Patent Nos. 8,720,218 and 9,226,474, both entitled “Pressure activated recharging cooling platform” and directed to a cooling platform comprising a temperature regulation layer, a support layer, and a channeled covering layer.  The temperature regulation layer is adapted to hold a composition and has a plurality of angled segments, wherein angled segments within a sealed perimeter of the temperature regulation layer are formed by a top side and a bottom side at a predefined distance, and channels, wherein the channels substantially form sides by contacting the top side with the bottom side at a distance lesser than the predefined distance.

The complaints allege that the defendants’ respective cooling mat products infringe the two patents.

 

Solar Powered Trash Compactors

BigBelly Solar, Inc. v. Ecube Labs Co.

In this lawsuit filed July 28, 2017 in U.S. District Court for the Central District of California, BigBelly asserts two patents relating to solar powered compaction technology.

U.S. Patent Nos. 7,124,680 and 7,481,159 are related patents, each entitled “Solar powered compaction apparatus” and directed to a trash compactor powered by a photovoltaic cell array.  The compaction feature allows the unit to be emptied less often than a typical trash container.  A removable bin allows easy removal of the compacted trash and can include multiple chambers for different trash types.

BigBelly’s complaint alleges that Ecube’s Clean CUBE product infringes the patents.

Wind Power

General Electric Co. v. Vestas Wind Systems A/S et al.

In this important wind industry lawsuit involving Zero Voltage Ride Through (ZVRT) technology, GE alleges that its Danish competitor, Vestas, infringes U.S. Patent No. 7,629,705 (‘705 Patent).

The ‘705 Patent is entitled “Method and apparatus for operating electrical machines” and directed to methods of facilitating zero voltage ride through so the turbine can remain online during voltage dips down to zero volts.

The complaint was filed July 31, 2017 in U.S. District Court for the District of California and lists the accused products as Vestas’ V90-3.0, V100-2.0, V112-3.0 and V117-3.3 wind turbines.

GE had a big win against Mitsubishi with this patent back in 2012.

Board Rules Wind Turbine Design Cannot Be a Trademark

September 22nd, 2017

In an interesting case at the intersection of patent and trademark law, as well as that of functionality and branding, Change Wind Corporation (Change) has lost its bid to register its turbine design as a federal trademark.

Change filed U.S. Trademark Application No. 86046590 (‘590 Application) in August of 2013 seeking registration of the following design mark for wind turbines and wind-powered electricity generators:

The application described the design as consisting of “four vertically extending turbine blades . . . obliquely curved in a twisting manner” and extending above and blow the “truncated cone” of a tapered “cylindrical base.”

The Trademark Examining Attorney refused registration under Section 2(e)(5) of the Trademark Act, which prohibits registration of a mark that is functional.

Change appealed the refusal of the applied-for design and, in a recent decision, the Trademark Trial and Appeal Board (Board) of the U.S. Patent and Trademark Office affirmed.

Prevailing case law holds that a product design or feature is functional if it is “essential to the use or purpose of the article” or if it “affects the cost or quality of the article.”

There are four categories of evidence the courts use to determine whether a design is functional.  Those include evidence of a utility patent disclosing utilitarian advantages of the design, advertising materials touting the design’s utilitarian advantages, the availability to competitors of functionally equivalent designs, and facts indicating the design results in simpler or cheaper manufacturing.

The most damaging evidence for Change was its U.S. Patent No. 9,103,321 (‘321 Patent), which not only showed the applied-for design in the patent drawings, but also recited features of the design in its claims.  Here’s FIG. 1A (almost identical to the design in the trademark application):

Here’s an excerpt from claim 1 of the ‘321 Patent:

A wind turbine comprising:

a frame structure;

a housing enclosing said frame structure;

a rotary, wing assembly supported by said frame structure, said rotary wing assembly including rotating eccentric cams and including asymmetric, helical swept wings that rotate to capture wind throughout a circumference of the rotary wing assembly from both windward and leeward sides so that a torque input spreads evenly to mitigate damaging harmonic pulsations that would otherwise arise without the torque input spreading evenly;

It clearly recites the curved blades / helical swept wings and their function.  Thus, the Board found that the ‘321 Patent showed that the applied-for design features are functional:

The patent thus plainly discloses the functional role of the three components disclosed and claimed in Applicant’s drawing of the mark: the conical tower, the helical wings, and the boundary fences affixed to the helical wings. These features are necessary elements of the invention and are essential to the functioning of Applicant’s wind turbine.

The Board went on to find the evidence of record on advertising to be inconclusive, and also found that the design alternatives were “merely variations of a single basic” turbine design.

The Board found that the evidence, viewed as a whole, establishes that the design was functional because it was essential to the use or purpose of the product.

One lesson is to choose either the patent or trademark route for a technological design and go with it; often it’s not feasible to do both.

Guest Post: UK Court Invalidates Enercon Patent, But is this the End?

September 15th, 2015

A decision by the High Court of Justice in the UK has handed Enercon a blow in the enforcement of their patent related to power ramp down after the cut out wind speed (EP0847496).

Enercon first filed their patent in 1995 in Germany and has been commercially offering their ‘Storm Control’ technology on their own turbines for many years since. An image representing the power output control strategy is taken from the Enercon patent.

Totaro FIG. 1

In invalidating the Enercon patent, the UK court seems to have taken an interesting interpretation of a paper from E.A. Bossanyi published in 1982 which dealt with an evaluation of performance the Boeing built MOD-2 wind turbine which was contracted by NASA and erected in 1980. Essentially, the Bossanyi paper contemplates a method for power ramp-down specially adapted to the variable speed, constant frequency (VSCF) MOD-2 wind turbine.

Siemens relied upon expert testimony in arguing that this approach could be applied to variable speed, variable pitch (VSVP) machines being developed around the time of the Enercon patent filing. The UK court agreed.

Totaro FIG. 1

Siemens also referenced a 1980 patent filing by Toshiba in their attempt to invalidate the Enercon patent. The Toshiba patent describes technology which ramps down after the ‘conventional’ cut-out wind speed, but does not ramp all the way down to null output power. Nevertheless, the UK court did not favor the Siemens interpretation of the Toshiba patent that it teaches what Enercon claimed in their own very similar patent.

totaro fig. 3

Open Opposition

Interestingly, Vestas had previously filed an opposition against the European version of the Enercon patent in a timeframe that would have allowed them to present new prior art. However, their opposition was rejected in November 2002 without citing either the Toshiba patent or the Bossanyi paper.

Nevertheless, a new opposition period against the Enercon patent filing was made possible as of January 2015 based upon an amendment to the Enercon patent triggered by the UK court matter. The prior art references and precedent set in the UK will likely influence a decision by the European Patent Office (EPO) on the validity of the Enercon patent.

However, invalidity of the European patent is not for certain and Enercon still has the opportunity to appeal the UK ruling. The European Patent Office does not have to accept the same conclusion as the UK court, so it will be very noteworthy if the European Patent Office takes the same approach regarding the Bossanyi reference in their review of the amended Enercon patent.

Since Enercon is likely to appeal the UK ruling, the Siemens matter is far from over yet.

Gamesa Litigation

This European patent filing from Enercon serves as the parent to both the UK as well as the Spanish patent which is the subject of the ongoing litigation with Gamesa. The precedent set in the UK is likely to have repercussions on the litigation in Spain if the UK court position on invalidity holds.

An invalidation of the European patent would likely negate the damage award against Gamesa in Spain, but there is still potentially room for Enercon to argue their position here, so the outcome is not guaranteed for anyone involved either.

In the meantime, Gamesa should at least be able to leverage off the non-infringement arguments in their appeal in the Spanish court.

New Precedent

The UK court potentially establishes another interesting precedent here, because there are certainly other patents held by companies in the wind industry which attempt to deal with component loading and fatigue which could also potentially be argued as obvious in light of the UK court’s interpretation of the technology developed for VSCF being applicable to VSVP based turbines.

The UK court judge refers to adjustment of the torque and pitch control “knobs” as a means to control generator rotor rpm as an obvious method in light of the Bossanyi paper, but also acknowledges other methods of implementing such technology:

…it required no inventive activity at all for a skilled person given Bossanyi in 1995 to think seriously about how to implement the power ramp down proposal in VSVP turbines.  They would consider how to put that into practice and, in terms of controls, it was obvious to think about “turning” the electric torque “knob” and the pitch control “knob”.  Reducing rotor speed as the wind speed increased as a way of reducing power accordingly is not the only way of putting Bossanyi into practice but it is an obvious approach.  Reducing the speed this way has an obvious advantage in terms of loading and fatigue.

Final Thoughts

Over the past 10 years we have seen Enercon attempt to enforce patents on frequency and voltage regulation against Vestas unsuccessfully, with the result being an invalidation in Ireland and the UK. We have also seen MHI successfully challenge the validity of the GE zero voltage ride-through patent in the US leading to an overturning of the $169M judgement and a settlement of their other ongoing litigation matters.

The past history of the wind industry’s capitulation to licenses is likely at an end as companies arm themselves with information to defend against the onslaught of IP challenges they face. This new level of intelligence gained as well as a better understanding of the commercial implications of IP infringement risks are providing companies with the opportunity to invalidate competitor patents with greater rigor and frequency than ever before in the industry’s history.

The implications of all these proceedings introduces some potentially substantial commercial risks into the project development process. Now that companies are willing to target the turbine OEMs, project developers and even the EPC contractors for patent infringement liability, the proactive companies are already arming themselves with information to ensure they can proceed smoothly.

 

*Philip Totaro is the CEO of Totaro & Associates, a consulting firm focused on innovation strategy, competitive intelligence, product development and patent search.  To find out more, or get in touch please visit www.totaro-associates.com.  Totaro & Associates delivers Innovative Solutions Enabled by Intelligence™.

Guest Post: Pace of Wind Innovation Slows, But is Set to Skyrocket Again

September 17th, 2014

Totaro & Associates, a Houston, TX based research and consulting firm has released a new research report on the pace of wind turbine technology innovation and proliferation.

IP ownership rankings show General Electric still leading with over 1,400 patent families, and the ability to now leverage the Alstom wind portfolio, which puts the combined total above 1,550.  Siemens has overtaken Vestas for #2 as predicted in last year’s report, and Mitsubishi drops from #4 to #5.

Previously outside the top 10, Guodian United Power has rocketed up into the #4 spot due to more patent filings in 2012 than any other company, although most filings were exclusive to China.

The top 10 wind turbine manufacturers control more than 56% of all wind patent filings, as well as over 77% of the patents which are broadly applicable to the entire industry or potentially infringed.  This strongly suggests the concentration of innovation in wind lies with those who can afford it.

The pace of patent filings has finally dropped for the first time after an average CAGR of 47% during the 2007 – 2011 time-frame.  The report indicates only a 7% growth in the number of global patent filings in wind in 2012 vs. 2011 and a slight decline for 2013 is expected as the recent market downturn has put a damper on research and development (R&D) spending and expenditure on IP protection.

Market conditions indicate that the pace is set to increase again in the coming years due to an increased commitment of expenditure on R&D.  Some companies are spending up to 6% of their revenue on R&D, which is almost double the spend rate in 2010 after the financial crisis.  Filings are expected to return to the levels seen in 2011 by 2015/16, although the average CAGR is expected to be a more modest 5 – 10%.

The research also shows that the US has the greatest number of patent filings on wind turbine technology, and companies have collectively spent over $162M on IP protection with over 8,365 individual patent filings there.  Europe is second at $138M with over 6,100 filings and China third at $61M with over 5,000 filings.  China is poised to overtake Europe for #2 within the next 12 months.

Globally, the entire wind industry has spent $522M to date on patent protection.  Expenditure on IP protection by wind companies is expected to escalate, with $1B to be spent by 2019 and $2B by 2026.

The past year has seen the penetration of some non-practicing entities (NPEs), more commonly referred to as ‘patent trolls,’ into the wind market.  These companies acquire orphaned intellectual property assets or develop their own patent portfolios specifically for the purpose of monetizing against the entrenched players in the industry.

With so many patents available for acquisition in the past 18 months, it is no surprise that these NPEs are seeing an opportunity to take advantage of market timing and attempt to drive up costs for operating companies in wind.

The full report is available from Totaro & Associates www.totaro-associates.com.

 

*Philip Totaro is the Principal at Totaro & Associates, a consulting firm focused on innovation strategy, competitive intelligence, product development and patent search.  To find out more, or get in touch please visit www.totaro-associates.com.

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

July 9th, 2014

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

 

Energy Management Software

Intercap Capital Partners, LLC  v. BuildingIQ, Inc.

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

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

LEDs

Honeywell International Inc. v. Cree, Inc.

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

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

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

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

 

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

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

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

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

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

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

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

U.S. Patent No. 6,577,512, entitled “Power supply for LEDs”

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

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

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

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

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

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

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

 

Smart Meters

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

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

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

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

 

Vertical Axis Wind Turbines

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

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

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

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

Wastewater Treatment

Chaffin v. Braden and LBC Manufacturing

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

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

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

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

May 22nd, 2014

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

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

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

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

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

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

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

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

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

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

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

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

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

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

 

*Mr. Wilkins disputes the accuracy of this post.

Guest Post: US Leads, Europe Second as Wind Industry Spends $430M on Patent Protection

September 16th, 2013

Utility scale wind turbines have become so technologically advanced that they have improved the cost of energy (COE) of wind enough to compete with today’s conventional energy sources.  The ensuing reduction in COE has been the result of two governing forces: public policy and technological innovation.  

The technological trends which have emerged thus far and what might be in store for the future direction of wind turbine technology are explored here.  Policy and governmental R&D support will continue to be essential, and barriers to wind technology commercialization must be further broken down.

The patent landscape can shed significant insight into what technological trends have emerged thus far and what we might be able to infer for the future direction of wind turbine technology.  The patent landscape analytics, as well as extensive analysis of forward looking competitive intelligence, helps shape our view of future technology trends for the industry.

Figure 1 – Analysis Methodology

 

The patent search results comprise over 8,665 patent families and over 32,834 global filings from 67 different countries, dating back to the year 1916 when some of the first grid connected technology took root.  In addition to a component and technology keyword classification, an assessment of the relevance of each patent filing to the industry was performed and results were classified as Low, Medium, Medium/High, and High. 

The assessment of industry relevance indicates the degree to which the patent owner has asserted its patent rights in the past or would be able to seek licenses or otherwise enforce the patent due to usage of that patent protected technology by their competition.

Figure 2 – Industry Relevance Assessment

 

With the results grouped by assignee (or patent owner), it should come as no shock to industry watchers who are the top assignees for wind patent filings.  The list largely coincides with the top market share holders in the sector, and the chart below shows the number of patent families held by each company.

Figure 3 – Assignees (by Patent Family)

 

The industry relevance results indicate that only 0.8% of issued patents would have a high impact on the entire industry as a whole if those patents were universally asserted, with another 6.9% which may become relevant in the future depending on technology evolution and use.  The remaining 92.3% of filings are merely providing owners with basic defensive IP protection on technologies they use in their own product lines, but are not widely used in the industry.

Table 1 – Portfolio Evaluation and Industry Benchmarking (Top 10 Companies)

 

 All combined, the top 10 turbine OEM patent holders control 54.5% of patent filings.  Only 67 patent families out of 8,665 catalogued thus far comprise technology which is broadly applicable to products and services offered commercially within the industry worldwide.

General Electric Company (GE) controls not only the largest number of patent families, but the largest percentage of all wind-related IP with over 15% of patent filings.  While most companies are in-line with industry averages in terms of overall portfolio distribution of Low, Medium and High risk filings, GE’s High risk patents as a percentage of their overall portfolio is double the industry average at 1.8% vs. 0.8%.  Their portfolio also comprises over 35% of all High risk patents held by all companies throughout the industry.

Figure 4 – Global Wind IP Ownership Share

 

Also notable is that top-tier companies have a combined High and Medium/High set of filings which is above the industry average of 7.7%.  The top 10 control over 77% of Medium/High and 80% of High risk patent filings.  This confirms the strong correlation between investment in both R&D and IP protection and the commercial success of top-tier companies.  There is a strong link between the reduced CapEx and optimized energy production resulting from the development and introduction of those patent protected technologies.

The heat map of the filing dates for the patent filings confirms that the majority of filings have occurred in the past decade or so.  Comparison of this trend to turbine capacity additions worldwide is reflective of the shared influence of public policy on technology adoption and the subsequent cost efficiencies enabled by widespread deployment of wind turbines.

Please note that the 2012 – 2013 filings have not all yet published because of an 18 month window in which the patents are not made public.  Filing count up to 2011 is comprehensive.

Figure 5 – Wind Industry Patent Filing Trends (Patent Families)

 

Countries favored for filing include the US, Europe and China, with PCT applications being used heavily in the past few decades.  Collectively, the wind industry has spent nearly US$430M (in 2013 dollars) to date on patent protection across all jurisdictions since 1916.  Our projections indicate that the total will exceed US$1B by 2020 and $2B by 2030, with escalation of filing pace assumed to be consistent to that of the past 5 years.  Annual expenditure will top US$100M per year by 2022.

Figure 6 – Global Wind Industry Patent Filing Costs

 

Figure 7 – Global Wind Industry Patent Filings (Top 30 Countries)

 

Clearly IP capture will continue to be an important consideration for top tier wind companies who are developing and commercializing new products.

 

*Philip Totaro is the Principal at Totaro & Associates, a consulting firm focused on innovation strategy, competitive intelligence, product development and patent search.  To find out more, or get in touch please visit www.totaro-associates.com.

Trigonometry Plus Non-Conventional Steps Equals Eligible Subject Matter in Blade Assembly Patent

July 22nd, 2013

 

Henryk Oleksy is the owner of U.S. Patent No. 6,449,529, entitled “Process for contour machining of metal blocks” and directed to methods of determining machining instructions for a milling machine to cut a concave hook in the root section of a turbine blade (‘529 Patent).

In most turbines, projections called hooks located on the interior surfaces of the root sections of turbine blades hold the blades to the rotary wheel of the turbine.  To prevent the blades from wobbling, the curvature of the hook in the root section must be machined to specific dimensions.

In 2006 Oleksy sued GE for infringement of the ‘529 patent, and both parties moved for summary judgment as to the validity of the patent.  The issue was whether the claims of the ‘529 Patent constitute patentable subject matter under Section 101 of the patent law.

Last month Judge Virginia Kendall of the U.S. District Court for the Northern District of Illinois granted Oleksy’s motion and denied GE’s, holding the ‘529 patent valid under Section 101 (Oleksy Opinion).

Claim 1 of the ‘529 Patent includes a recitation that the instructions for a computer numerical control milling machine are “obtained by trigonometric analysis” of the required curvatures of the spinning form cutter and rotary table of the machine.  Standing alone, trigonometric analysis is an unpatentable mathematical formula.

Therefore, the question was whether the claim includes an additional element or elements that constitute an “inventive step.”  The court found that claim 1 of the ‘529 Patent does contain such additional elements including a step of moving the spinning form cutter “in a convex path” while the rotary table rotates “simultaneously from a plus rotation angle to a minus rotation angle and, alternatively, from a minus rotation angle to a plus rotation angle.”

According to the court this step is unconventional and was not used before Oleksy’s invention.  Therefore, the patented process is more than a mere mathematical formula:

As a result, Oleksy did not patent a mathematical formula, he patented a unique process of milling a root section of a turbine blade that happened to include the use of a mathematical formula as part of the process . . . Oleksy’s patent does not pre-empt the use of his trigonometric analysis, he simply forecloses it[s] use with respect to causing a spinning form cutter to move in a convex path to machine the root section of a turbine blade.

The court found an inventive step and also, significantly, noted that the claimed invention is limited to this particular application.  Accordingly, the claimed invention is patent eligible subject matter under Section 101:

Oleksy’s patent contains specifically defined, non-conventional steps.  Moreover, the patent is limited to the particular application of milling the curvature of a hook . . . Oleksy’s process is patent eligible under Section 101.

The court’s decision also addressed claim construction issues and the parties’ motions to dismiss and strike certain claims and defenses.

A2SEA’s Offshore Wind Turbine Installer Does the Heavy Lifting

May 2nd, 2013

One of the major trends in wind power is ever larger turbines for offshore use.  This raises many technical challenges, including how to transport and install such large components at offshore sites.

A2SEA is a Danish company that has expertise in precisely these challenges and has developed technology for it.  The company’s Sea Installer is a wind turbine installation vessel designed to operate in deep offshore waters.

A2SEA owns at least one U.S. patent and several international patent applications, including U.S. Patent No. 6,808,337 (337 Patent) and International Publication No. Wo2006/076920 (‘920 Application).

The ‘337 Patent is entitled “Vessel with vertically elevational support legs” and directed to a ship (1) which has a hull (2), a deck (3), and two auxiliary cranes (10) positioned on the deck.  A console (5) is mounted on either side of the hull (2), and support legs (9) are disposed in the console (5).

There are two support legs (9) at either end of the console (5), and they are connected to a winch wire (8), which provides for the right pressure on the support legs (9) via a hydraulic system.  A large crane (11) having a loading capacity of about 450 tons is positioned on either side of the hull (2).

During mounting of a wind turbine, the support legs (9) exert the proper pressure to lift the ship (1) and the winch is locked to maintain the stability of the elevated ship:

During the mounting of a windmill the ship will thus on all four legs exert a pressure of 300 tons, which will lift up the ship, whereafter the winch is locked such that a possible wave will not give rise to instability.

The ‘920 Application is entitled “Lifting device for a wind turbine generator” and directed to a lifting device comprising a yoke (5) connecting the hook of a crane (11) with a collar (17) on the tower (8) of a wind turbine (9).  The yoke (5) surrounds the nacelle (113) of the turbine (9) and is designed to lift and move a complete wind turbine.

According to the ‘920 Application, the yoke (5)  provides a stable lift because it is attached at a particular point of the wind turbine (9) that represents the turbine’s center of gravity:

In a suitable crane 35, the lifting yoke 5 can be mounted and designed to lift the WTG 9, which is attached at a predeteπnined point near the top of the tower 8 and below the nacelle 13. By lifting the WTG 9 at the top of the tower 8, it will be conveniently close to the centre of gravity that will make the lift of the WTG 9 a stable but heavy lift.

 

Altenera Pitches Wind Energy from the Future

March 7th, 2013

Altenera Technology (Altenera), a Maryland company, was recently chosen as one of just eight finalists to present at the Future Energy Pitching session of the ARPA-E Innovation Summit last month.  Altenera achieved this honor due to its Oscillating Reed Wind Harvester technology.  

The company calls its technology BreezBee®, which uses vibrating reeds to harvest energy from the wind under “virtually all wind conditions.”

The BreezBee® technology is covered by U.S. Patent No. 8,258,644 (‘644 patent) entitled “Apparatus for harvesting energy from flow-induced oscillations and method for the same.”  The ‘644 patent describes “a device and method for harvesting electrical power from kinetic energy of a flow” where “the external gas or liquid flow causes a vibration of the assembly . . . producing electricity in proximity of a magnetic field.”

The ‘644 patent can be better explained with reference to Figure 1(a), reproduced here from the patent.  As the fluid (7) flows over the elastic element (3), the integrated conductive element (8) moves back and forth in the (9) direction with reference to the magnetic field (8) created by the magnetic field source (6), producing electricity. 

The magnetic field should be “fully or substantially perpendicular” to the conductive element.  The shape, form, and materials of the vibrating assembly can vary based on the application, and “are defined by the maximum conversion efficiency for a particular application.”

The BreezBee® represents a functional application of the ‘644 patent.  The LEGO-like hexagonal modules shown here allow for easy combination into arrays of various sizes, making them “easily customizable for any situation.”  

The ‘644 patent discloses a number of such situations: (1) attached to flying vehicles to capture high altitude flows; (2) used in confined flow passages such as pipes or HVAC ducts; (3) used as a flow sensor while simultaneously providing the power to transmit gathered flow information; and (4) implementation as roof panels, providing a more cost-effective alternative to solar cells.   

Further, because this technology has no moving parts, it is “a virtually maintenance-free source of electrical power.” 

While one blog has noted that the details on some of the specifics were limited during the presentation to investors, the modularity, low-maintenance, and customization makes the BreezBee® an attractive alternative to turbine power. 

And if the noiselessness claim (see ieee blog above) made by Altenera’s CBDO, Chase McCarthy, is accurate, BreezBee® would have a notable advantage over turbine power by side-stepping the noise pollution problem that has plagued turbine power.

 

*Cliff Brazil is a contributor to Green Patent Blog.  Cliff is currently in his second year at the University of Kansas School of Law in Lawrence, Kansas.  He received his undergraduate degree in Metallurgical and Materials Engineering from the Colorado School of Mines in Golden, Colorado.