Archive for the ‘Wind Power’ category

Looking Back at the Top Green IP Stories of 2012

January 13th, 2013

 

Before we start fresh with the new green IP issues as they unfold in 2013, here is a look back at some of the top stories from 2012.

 

No. 8:  With Pilot Past, How to Get Green Patents Fast?

The U.S. Patent and Trademark Office’s Green Technology Pilot Program came to end in February, prompting questions such as why? and what do we do now?  I offered some answers in this post, and laid out my vision of a harmonized international green patent fast track program here.

 

No. 7:  Falsely Over 40? 

One of the largest greenwashing class action cases exploded in the fall of 2012, with a host of complaints filed against Korean automakers Hyundai and Kia.  The plaintiffs alleged that the automakers built advertising campaigns around representations that a number of their vehicles achieved gas mileage in the 40 mile per gallon range when they knew or should have known the actual mileage was signficantly lower.  According to the complaints, an EPA investigation prompted by consumer inquiries found the gas mileage was overstated in seven Hyundai models and six Kia models, with as much as a 6 mpg discrepancy in some models.

 

No. 6:  Honeywell Targets Nest with Thermostat Control Patents

In February Honeywell sued Nest Labs, alleging that Nest’s trendy learning thermostat (pictured above) infringes seven Honeywell patents relating to thermostat control technology.  Nest requested that the U.S. Patent and Trademark Office initiate reexamination of all the asserted patents, and each patent was initially rejected in the proceedings.  The suit could have wider ramifications for the energy management industry as some of the features of the Honeywell patents are already being used by other companies.

 

 No. 5:  Class Action Charges Nissan with LEAF Greenwash

 

Hybrid electric vehicles have been targeted by greenwashing class actions in recent years, but 2012 saw the first such case against an all electric plug-in.  In October, a proposed class action complaint accused Nissan of making misleading representations and inflating the LEAF’s battery capacity and driving range.  The plaintiffs also alleged that the LEAF’s battery system lacks an active thermal management system to circulate cooling fluid through the battery array, a design defect that leads to battery damage and loss of capacity.

 

No. 4:  GE Wins Big in Wind Patent War

The year saw a major victory for GE in its large and long-running wind patent war with Mitsubishi when a Texas jury found that Mitsubishi infringed a key GE wind turbine patent and awarded GE about $170 million in damages.  The patent-in-suit was U.S. Patent No. 7,629,705, which relates to methods of facilitating zero voltage ride through so the turbine can remain online during voltage dips down to zero volts.  GE had other wins in 2012, including a Federal Circuit ruling that breathed new life into its ITC dispute with Mitsubishi.

 

No. 3:  With Fast Track Launches, Two BRICs Fall from the Anti-Green Patent Wall

In an apparent policy 180 (at least with respect to prior rhetoric), two of the BRICs joined the green patent fast track bandwagon in 2012.  In April Brazil’s Institute of Industrial Property launched a pilot program to accelerate green technology patent applications, though it appears to offer limited opportunity for non-Brazilian applicants to participate.  China’s State Intellectual Property Office launched its own prioritized examination program for green patent applications in August. 

As discussed here, these launches arguably are significant developments in view of the countries’ stance on IP protection of green technologies in the UN climate change treaty talks and could represent an inflection point in green IP thought and policy in emerging markets and developing countries.

 

No. 2:  Burgeoning Biobutanol Battle

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 litigation.  There are at least 17 suits and 14 patents at issue in the various actions brought by both parties.  The patents relate to methods of production of biobutanol and enzymes used in the production processes.  The post on Butamax’s opening salvo can be found here, the latest on the complaints filed here, and coverage of the appellate decision denying Butamax’s bid for a preliminary injunction here.

 

No. 1:  Chinese Supremes to American Superconductor:  We’ll Hear You

(1)  In one of the most significant and closely watched IP cases of the year, American Superconductor (AMSC) filed several lawsuits against Sinovel in China, testing the Chinese wind turbine manufacturer’s home court advantage.  This litigation, involving charges of copyright infringement and misappropriation of trade secrets in connection with software code for turbine control systems, has implications for the clean tech industry and beyond. 

IP protection in China is a huge issue, and for technology companies of all stripes seeking to do business in China this case may be a barometer of whether outsiders will receive a fair shake in enforcing their IP rights in China.  In a promising development, the Chinese Supreme People’s Court (pictured above) agreed to hear AMSC’s appeal of an appellate court dismissal of its copyright infringement action on jurisdictional grounds.

Shaping IP Rights in SCADA Systems to Benefit Wind Turbine Purchasers

December 21st, 2012

 

As the sales of wind turbines increase, it is likely that the disputes between suppliers and purchasers will also increase.  Wind turbines encompass a variety of tangible and intangible components, including the software necessary for operations and maintenance. 

One contractual issue that turbine suppliers and purchasers may dispute is what the supplier believes is proprietary information, but the purchaser and now owner, believes is necessary to the turbine operation and maintenance and to protect its investment after the warranty period expires.

After the sale of a wind turbine, but during the warranty period, the supplier is responsible for ensuring the turbine is operating successfully and the purchaser of a wind turbine is often provided access to the wind turbine data necessary for maintenance and monitoring of systems.

This includes the software licenses utilized by the supplier for remote monitoring, which is typically referred to as the Supervisory Control And Data Acquisition (“SCADA”) system.  Consequently, when the warranty period expires, and the supplier withholds the SCADA information, the purchaser is left in a bind.

Following the expiration of a wind turbine’s warranty period, the purchaser of the turbine should be granted unrestricted and full access to the SCADA system, software, and access codes for automated control capabilities in order to effectively and efficiently perform on-going maintenance and monitoring, to resolve and restore turbine operations following fault conditions to ensure wind turbines meet investment objectives, and comply with permits and grid control requirements.

Generally, SCADA systems allow remote access to a device to monitor and maintain the device.  For example, the OnStar® system used by General Motors (“GM”) in its vehicles would likely be considered a SCADA system.  For a monthly fee, OnStar® remotely monitors and accesses the vehicle, and includes features such as “automatic crash response,” where the system automatically sends information to a remote center in the event of a collision; vehicle diagnostic and maintenance information; and the ability to remotely shut down a stolen vehicle.

Now imagine you purchased a GM vehicle equipped with OnStar®.  Assume the information provided by OnStar® was necessary to the vehicle’s operation and maintenance.  You enjoyed all of the features of OnStar®, but after the OnStar® warranty expired, you wanted to switch to another (fictional) company, MonITor. 

However, GM was unwilling to provide you, or MonITor, the information necessary to access the vehicle’s software system.  And, without the access codes to the software, you were unable to use the vehicle.  In other words, without OnStar®, you did not have a vehicle, but merely a nice place to sit.  However, GM was willing to extend your existing OnStar® contract with them, for a fee of course. 

Currently, some wind turbine owners face a similar situation. In these cases, the wind turbine purchaser is comparable to the vehicle owner.  During the warranty period, the purchaser is (1) granted a limited right to use the software supplied; (2) provided access to the turbine data necessary for maintaining and monitoring systems; and (3) provided access to the codes and software licenses utilized by the supplier for performing services such as remote monitoring and reports. 

If the turbine is not operating, or not operating efficiently, the purchaser needs access to the SCADA system to restore the turbine to peak operating conditions, and to ensure it’s meeting the regulatory requirements for operating the turbine or the owner will lose money on its investment. 

Some SCADA systems for wind turbines are protected by patents.  For example, GE owns U.S. Patent 7,013,203, which claims “[a] supervisory command and data acquisition (SCADA) system to manage a wind farm.” 

SCADA system software should be protected under patent law and doctrine because the combination of patent protection and patent exhaustion would balance the rights of turbine suppliers and owners. 

As stated in the Supreme Court’s Quanta Computer opinion, the patent exhaustion doctrine,  “provides the initial authorized sale of a patented item terminates all patent rights to that item.”

In Quanta, the Court held that the doctrine of patent exhaustion applies to the authorized sale of a components that “substantially embody” a method patent and reaffirmed that “the right to vend is exhausted by a single, unconditional sale, the article sold being thereby carried outside the monopoly of the patent law and rendered free of every restriction which the vendor may attempt to put on it.”

This situation, in which the purchaser of a wind turbine was merely granted a non-exclusive license to use copyrighted SCADA software, is comparable to the Quanta case.  First, for the sale of the wind turbine itself, the patent exhaustion doctrine “provides that the initial authorized sale of a patented item terminates all patent rights to that item.” 

The sales of wind turbines as tangible products that incorporated method patents, such as the SCADA software, should exhaust the wind turbine supplier’s patent rights (or copyright) because the purchaser cannot practice the wind turbine, nor does it function at all, until the wind turbines are combined with a computer system.  Thus, the wind turbines substantially embodied the SCADA system software because they had no reasonable noninfringing use and included all of the inventive aspects of the patented methods.

Secondly, the  SCADA license should be comparable to the license of a method patent and patent exhaustion should apply, even if the software is copyrighted.  Here, the SCADA system software is comparable to a method patent, and patent holders could avoid exhaustion by using copyrights, when they should use patents to protect the SCADA software.

Thus, the patent exhaustion doctrine should apply, and the sale of the software in the presumably patented wind turbine should exhaust the rights to the software, even if it is protected under copyright law.

The wind turbine supplier certainly has the right to protect proprietary information, but it is the purchaser who has the most to lose.  The purchaser has a substantial investment in the tangible wind turbine itself, and needs the ability to continue operating and maintaining the turbine after the warranty period expires.  Without access to the necessary information, the pruchaser might be unjustly forced to continue its contract with the supplier.

The patent exhaustion doctrine should be used for SCADA software purchased in conjunction with a wind turbine, which will necessarily change the type of enforcement of intellectual property rights available to companies for licenses of SCADA software sold in conjunction with wind turbines.

 

*Sara Kelley is currently in her third and final year at Thomas Jefferson School of Law in San Diego.  She received her undergraduate degree in Civil Engineering from San Diego State University.

This is the third of three posts highlighting work by students who took my seminar class – Green Technology, Climate Change, and Intellectual Property Law –  this semester at Thomas Jefferson School of Law.  – Ed.

Integration Conflagration: The Tragicomic Case of Wind Wire’s Greenwash

November 19th, 2012

Wind Wire is a South Bend, Indiana, installer of residential wind turbines.

In August 2010 Roger and Patricia Finney sued Wind Wire in Indiana state court for alleged greenwashing in connection with a residential wind turbine system.

The Finneys’ central charge was that the company fraudulently induced them to purchase a wind turbine for their home by knowingly making false or misleading statements as to cost savings the turbine would provide.  After a trial court judgment for the Finneys Wind Wire appealed.

In a recent opinion the Court of Appeals of Indiana affirmed the judgment for the Finneys.  At issue in the case was a Wind Wire brochure making a number of representations about the cost savings of the wind turbine, including the following:

the average household would save “approximately 75% to 100% of current electric service”;

the customer would see a return on investment or “payoff span of 3-4 years”;

the wind turbine system could “generate an average of 700 K wh (sic) per hour”; and

the homeowner would receive a “substantial refund” on taxes by installing the wind turbine system.

Apparently, through its representatives, Wind Wire echoed all of the claims from the brochure in its communications with the Finneys.  A sales rep repeated the cost saving claims to the Finneys.  Wind Wire also erroneously told them that AEP, the Finneys’ utility, would purchase the excess energy produced by their wind turbine.

The company also told the Finneys that they would be entitled to a tax credit, the amount of which would be based on a percentage of the purchase price of the turbine when, in fact, the credit was fixed at $900 for the Finneys.

Since the Finneys’ wind turbine was installed, it has produced no excess power and has had no effect on their electric bills.  According to AEP, it typically takes not 3-4 years, but 25 years for a residential wind turbine to pay for itself.  Instead of the advertised 700 kWh, after about one year of use the Finneys’ turbine has produced a total of only 134.2 kWh of electricity.

In perhaps the most tragicomic manifestation of greenwashing here, the wind turbine actually consumes energy when it is idle.  Similarly absurd was the revelation that the sales rep dealing with the Finneys had no prior wind turbine experience and “the extent of [his] formal training was a one-hour ‘webinar.'”

The trial court held that Wind Wire had breached its contract with the Finneys, in particular both the express warranties and the implied warranty of fitness of the turbine, and that it fraudulently induced the Finneys to enter into the contract by knowingly misrepresenting its experience and expertise and the cost savings of the turbine.

In view of all the egregious evidence on record, perhaps it’s no surprise that Wind Wire’s strategy on appeal was to steer away from the facts of the case and instead rely on a purely legal argument based on a provision of its contract with the Finneys.

In particular, Wind Wire contended that the Finneys could not justifiably rely on any of its representations about the wind turbine because their contract contained an “integration” clause.  An integration clause is a provision stating  that the contract contains the parties’ entire agreement to the exclusion of any outside statements or representations.

The appellate court disagreed and affirmed because it found no clear error with the trial court’s judgment.  As to Wind Wire’s argument, the appellate court noted that under Indiana contract law a party can overcome the effect of an integration clause if it shows it had a right to rely on the alleged misrepresentations and did rely on them in executing the integration clause.

An interesting side note is that Southwest Windpower, the manufacturer of the turbines Wind Wire installs, placed the installer on six months’ probation because of concerns over Wind Wire’s marketing materials and customer satisfaction.

Thanks to the DSV Construction Law Blog’s post on this, which brought the story to my attention.

 

 

 

Guest Post: Are Wind Project Financiers and Developers Underestimating the Risk of Patent Infringement?

November 7th, 2012

Totaro & Associates has completed the second phase of a study which began in December 2010 on the patent landscape of the horizontal-axis, utility-scale wind industry.  We have now read and classified over 23,100 global patents and applications, with over 3,200 issued patents in the US alone.

As we have highlighted in previous posts (here and here) on our wind turbine patent landscape, the analysis looks at the breadth of patent claim coverage and the use of that patent-protected technology within the industry.  Close to 11% of patents in any given country can be classified as high risk patents, or those which have broad claim breadth that covers technology which is being used by at least one other turbine vendor besides the patent holder.

This analysis, and the creation of risk profiles for each turbine OEM product offering, has provided clarity on the scope of potential patent infringement risks of any turbine topology or drivetrain architecture, regardless of turbine OEM. 

The OEMs are far and away the largest holders of all these patents and the overwhelming majority, more than 95% of high risk patents are held by the turbine OEMs and key sub-component suppliers.  These patent holders are keen to protect their intellectual property rights in the current market climate.

Presently there are some turbine OEMs who are not willing to provide full indemnity to turbine purchasers in the supply agreements, even though the OEMs receive full indemnity from sub-component suppliers when they buy a generator or a blade or even a tower.  Vertically integrated OEMs have even more work to do themselves when it comes to ensuring they have freedom to practice, since they retain more liability due to an increased scope of supply.

Proactive companies as well as most of the larger OEMs are willing to allocate resources to evaluate patent infringement risk and undertake mitigation strategies such as licensing or even a freedom to practice analysis prior to product launch.  The cost of licensing can be prohibitive to competitive cost of energy, so most of the smaller OEMs and those who do not have a large presence in a given market will not opt to undertake a freedom to practice project.

Patent infringement risk is shared by all (see Table 1), especially in cases where the OEM is not engaging in appropriate risk mitigation activities on its own.  Even those who do may only pay attention to the hot button issues at the urging of financiers or outside counsel, especially those patents in active litigation.  Hundreds of relevant patents are often missed leaving a veil of ignorance covering a gaping whole.

Table 1

The cause of the gap lies in the search protocol typically used by most IP professionals.  Taking an example of a patent database search in the US for issued patents related to the keywords (“wind turbine” and “power factor control”) nets 118 results.  The same search conducted in the Totaro & Associates patent landscape not only yields more comprehensive results with 156, but provides an analysis of patent infringement risk:

The generic keyword based search also turns up numerous false-positive results including: 

  • US7580777    Modular aircraft control system and method
  • US6936947     Turbo generator plant with a high voltage electric generator
  • US6894416     Hydro-generator plant

While ignorance of the patent rights of a competitor may avoid treble damages in patent infringement litigation, such ignorance is not the best way to quantify and mitigate risk.  It can still create a PR and sales issue if assertion and/or lawsuits arise.  Even though it can seem like there are an infinite number of patents out there, the numbers are actually finite, albeit substantial.

During market conditions where revenue from turbine sales is diminishing, everyone needs to be cognizant of the OEMs willingness to make up for those shortfalls by enforcement of intellectual property rights.  Developers and financiers need to ask for more in the way of indemnity in a turbine supply agreement, and seek independent verification of patent infringement risks. 

If insurance is used as a risk mitigation strategy, the providers need to be cognizant of the scope of work performed by the turbine suppliers and the potential shortcomings of those efforts.

It may be a mountain to climb, but the summit can be reached and in this case having a guide can make all the difference.

*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.

Wilkins Wins Wind Patents as Court Tentatively Finds GE SOL*

October 28th, 2012

In previous posts here and here I discussed a companion lawsuit to the major GE-Mitsubishi wind patent litigation in which GE and a former employee are fighting over the rights to certain wind turbine technology.

In that suit, filed in the Eastern District of California, GE accused Thomas Wilkins, an electrical engineer who worked at Enron Wind and GE after it acquired Enron, of breaching his employment agreements with both companies by asserting an ownership interest and trying to license U.S. Patents Nos. 6,924,565 (‘565 Patent) and 6,921,985.

Although the court granted GE’s motion for a preliminary injunction last year and ordered Wilkins to temporarily cease his licensing activities, the case has seen some twists and turns resulting in an apparent victory for Wilkins.

In an Order decided earlier this month, the court “tentatively” granted partial summary judgment for Wilkins, holding that he owns the ‘565 Patent and therefore has the right to license it.  The court also granted Wilkins’ request that the preliminary injunction be dissolved with respect to the ‘565 Patent.

Over the course of this case, GE had put forth two arguments as to why it, and not Wilkins, owned the rights to the ‘565 Patent.  The first was that Wilkins was hired by Enron and GE to invent, and as such, he was obligated to assign the rights to the ‘565 Patent to GE.

However, in a prior order the court held the statute of limitations had passed for GE to enforce this obligation:

the Court concluded in its summary judgment order that even if Mr. Wilkins was hired to invent, GE’s ability to enforce Mr. Wilkins’ obligation to assign his rights to the ‘565 patent is time-barred.  The statute of limitations period on that claim expired in 2007 at the latest.  Accordingly, GE cannot establish sole legal title to the ‘565 patent under a “hired to invent” theory and cannot preclude Mr. Wilkins from licensing the patent on that basis.

In the most recent decision, the court rejected GE’s alternative legal theory that under California law an employee hired to invent not only has a duty to assign his rights, but also has an independent duty not to use the invention to the detriment of his employer.

The court found nothing in the case law to support the application of this principle to patents or to licensing.  Accordingly, the court held that Wilkins owns the ‘565 Patent and has the right to license it:

Absent assignment, Mr. Wilkins retained his ownership interest in the ‘565 patent and enjoys an unfettered right to license the patent.

The court did, however, make the grant of summary judgment for Wilkins “tentative” and gave GE the opportunity to raise other issues before it enters judgment:

Because GE’s legal basis for precluding Mr. Wilkins from licensing the ‘565 patent appears to lack merit, the Court will tentatively grant Mr. Wilkins summary judgment on this matter.  GE will be given a final opportunity to raise any other issues not already addressed by the Court before summary judgment is entered.

The court also granted summary judgment for Wilkins with respect to his duty to assign the ‘985 Patent after GE conceded that the statute of limitations period on that claim expired in 2004.  This was because GE was aware back in 2002 that Wilkins breached his duty to assign the rights to the patent, and there is a two-year statute of limitations on the claim.

Not only is this a win for Wilkins, but it’s also a victory for Mitsubishi, who had intervened in the case.  The suit aroused Mitsubishi’s interest because the ‘985 Patent is one of several asserted by GE against Mitsubishi in at least two lawsuits, including a patent infringement case in Texas and an investigation in the U.S. International Trade Commission (ITC).  Among other things, Wilkins’ inventive contributions to the ‘985 Patent were at issue in the ITC case.

The ‘985 Patent is also one of the patents-at-issue in Mitsubishi’s antitrust suit against GE, in which it has accused its rival of engaging in an anticompetitive scheme to monopolize the U.S. market for variable speed wind turbines.  The antitrust suit was stayed pending resolution of the patent infringement suits.

 

*Mr. Wilkins disputes the accuracy of this post.

British Consumer Watchdog Shuts Down Trump’s Category-Defying Anti-Wind Ad

October 25th, 2012

The UK’s Advertising Standards Authority (ASA) recently shut down an anti-wind power ad run by the Trump Organization and Communities Against Turbines Scotland on the grounds that the picture and text of the ad were misleading (see the Treehugger piece here).

The ad (reproduced above) said “Welcome to Scotland” in its headline, showed a picture of several old and dilapidated wind turbines, and included the text “Alex Salmond wants to build 8,750 of these monstrosities – think about it.”

The ASA upheld three challenges to the ad brought by Scottish Renewables, a green energy trade association.  First, the agency found the photograph misleading because it was not taken in Scotland but was instead a picture of a decommissioned wind farm in Hawaii. 

Trump argued the picture was used to make a satirical point, but the ASA was not convinced and noted that Scottish regulations would prevent the wind turbines from deteriorating to the condition shown in the photograph.  Accordingly, the ASA held that the picture gave “a misleading impression of the possible consequences of the Scottish Government’s plans to use wind turbines.”

In the second part of the ruling the ASA found the ad’s claim that the Scottish government wants to build 8,750 of “these monstrosities” to be misleading because it suggested that the wind turbines shown were the type of turbine likely to be used in Scotland.  That was not the case, the agency said, because the picture was of a very old wind farm and the disclaimer language was not enough to dispel the impression that those particular turbines would be used in Scotland:

We understood that the picture was of a wind farm built in 1987 and decommissioned in 2006 and therefore the model of turbine was unlikely to still be used in new wind farm projects.  Although the small print stated that the photo had not been taken in Scotland, we considered that it was not sufficient to remove the overall impression that the turbines shown were the type that had been used, or would be used, in Scotland.

Finally, the ASA found use of the number 8,750 was misleading and unsubstantiated because it implied that the number of turbines was based on an official Scottish government figure, which was not the case, and exaggerated the number of turbines.  In particular, a Scottish government policy document had estimated a total of 5,645 turbines would be required to meet the government’s  renewable energy goals.

Although it is a misleading attempt to trash wind power, the Trump ad doesn’t really qualify as greenwashing.  That term typically means making false or misleading statements about the purported environmental benefits of one’s own products, services or business practices. 

It isn’t reverse greenwashing either because that’s making false or misleading statements about the purported negative environmental impact of a competitor’s products, such as the allegations of plastic bag makers against ChicoBag.

I really don’t know how to classify this ad.  I suppose The Donald has found yet another way to defy categorization.

Black Cloud Blows Over as Sinovel Satisfies Brazilian Developer

August 28th, 2012

A previous post discussed the legal action brought by Brazilian developer Desenvix to compel Chinese wind turbine maker Sinovel to permit inspections of its turbines being imported into Brazil. 

Due to the major copyright and trade secret lawsuits in China in which American Superconductor (AMSC) has accused Sinovel of misappropriation of proprietary wind turbine control source code, Desenvix sought assurances that the Sinovel wind turbines were free of components affected by the IP litigation.

According to this Recharge story, Desenvix has received satisfactory assurances and has withdrawn its request for a court order.  Apparently, Sinovel told the Brazilian company that the control systems in the turbines were supplied by Emerson Electric, and Emerson confirmed.

Desenvix also said Sinovel confirmed that the control software in the turbines at issue is a “brand-new innovation” developed by the Chinese manufacturer.  Finally, Sinovel has agreed to permit an independent third party to conduct a technical inspection of the control systems.

So Sinovel’s troubles in Brazil have passed, for the moment.  The company also faced some business damage in Ireland when Mainstream Renewable Power ditched Sinovel and began to look for an alternative supplier for 1 GW of wind farm projects planned there.  Clearly, accusations of IP infringement can have major ramifications outside the courtroom.

Black Cloud Over Sinovel Blows into Brazil

August 14th, 2012

In a previous post, I discussed some of the out of court business damage suffered by Sinovel as a result of the IP suits filed by American Superconductor (AMSC) against the Chinese wind turbine maker in China.

That post reported the news that Mainstream Renewable Power ditched Sinovel and was looking for alternative suppliers for large wind farm projects in Ireland.

Sinovel is also having difficulty in Brazil because of the AMSC IP cloud hanging over its wind turbine business.  Recently, Brazilian developer Desenvix filed a request for a court order to inspect Sinovel wind turbines imported into Brazil to determine whether they contain components affected by the litigation with AMSC.

According to this Recharge piece, the turbines at issue are probably the 23 1.5 MW devices ordered by Desenvix for the Barra dos Coqueiros wind farm in Sergipe state. 

The Recharge article quotes a statement from AMSC about the impetus for Desenvix’s court filing:

Since the turbines arrived in Brazil, Desenvix has been requesting evidence from Sinovel that the wind turbines do not contain AMSC’s stolen intellectual property.  To date, Sinovel has refused to provide adequate evidence.  As a result, Desenvix filed the court order.

It is unclear what Desenvix would do if it does not receive assurance that the Sinovel turbines are free of allegedly infringing parts or an inspection reveals that they do contain components implicated in the AMSC litigation.

Sinovel is not the only wind turbine manufacturer to find its business damaged by pending IP infringement actions.  Mitsubishi has claimed that GE’s accusations of infringement of several variable speed wind turbine patents virtually shut down its U.S. business.

According to Mitsubishi’s court filings (mitsubishi_antitrust_complaint.pdf), its $2 billion in annual U.S. sales of variable speed wind turbines dropped to zero after initiation of the first patent infringement suit by GE in early 2008.

These stories are likely to continue and become more prevalent in clean tech.  It will be interesting to see if the infringement litigation against Sinovel will tarnish the reputations or hurt the business of other Chinese clean tech companies as well.

GE Dodges Mitsubishi Wind Turbine Blade Pitch Angle Patent

July 20th, 2012

A previous post discussed Mitsubishi’s patent infringement action against GE in which the Japanese conglomerate fought back against multiple infringement suits (see, e.g., here and here) brought against it by GE.

Mitsubishi’s Complaint, filed in the Middle District of Florida, accused GE of infringing U.S. Patent No. 7,452,185, entitled “Blade-pitch-angle control device and wind power generator” (‘185 Patent).

Earlier this month, GE emerged victorious as the court granted GE’s motion for summary judgment on non-infringement of the ‘185 Patent.

In the suit, Mitsubishi alleged that GE’s wind turbines containing its Advanced Controls and Model-Based Controls (MBC) systems infringed independent claims 1 and 5 of the ‘185 Patent. 

Each of the claims recited a blade-pitch-angle control device comprising a memory device, an azimuth-angle detecting device, a parameter-detecting device, a command-value receiving device, and a pitch-angle-control command-value generating device. 

The decision turned on the interpretation of a key claim element reciting the functionality of the control device’s command-value receiving device:

a command value receiving device that receives the pitch-angle command values for each of the blades from the memory device, the pitch-angle command values being selected on the basis of the azimuth angle of each blade detected by the azimuth-angle detecting device and the predetermined parameters detected by the parameter-detecting device

Mitsubishi identified two GE pitch values that it alleged satisfied the limitations of the claims – the “Aerobalance” value and the “Lower Pitch Limit.” 

GE countered that its turbines do not infringe claims 1 or 5 of the ‘985 Patent because the pitch-angle control values in Advanced Controls and MBC are calculated rather than received and selected from a memory device.

In particular, with respect to the Aerobalance value, GE asserted that the pitch offet values are not selected on the basis of azimuth angle and predetermined parameters.  Rather, GE said they are stored in memory for twenty minutes and continuously applied to a specific blade, if needed, regardless of the blade’s azimuth angle.

The court agreed with GE on the Aerobalance value, relying upon Mitsubishi’s expert testimony:

Dr. Van Schoor [Mitsubishi’s expert] acknowledged in his deposition that the AeroBalance value is applied for twenty minutes to a blade – as the blade rotates around and around – and is used regardless of that blade’s azimuth angle.  Thus, it cannot be said that the AeroBalance value is selected on the basis of azimuth angle as required by the claim limitation.

As to the Lower Pitch Limit – a value below which the pitch angles are not set – the court found that, though azimuth angle is used to calculate a command value for pitch angle, that is not sufficient to meet the claim limitation at issue:

The use of azimuth angle in calculating an individual pitch-angle command value that is then compared to the Lower Pitch Limit – followed by selection of the Lower Pitch Limit – does not amount to selecting a pitch-angle command value based on azimuth angle.  The Lower Pitch Limit is chosen over the other, calculated pitch-angle command value – if at all – based on a numerical comparison between the two, not based on a blade’s position….The fact that azimuth angle might be an input into the calculation of the comparator pitch-angle command values does not satisify the “selected on the basis of” limitation.

This is the second recent federal court victory for GE over Mitsubishi.  In March a Texas jury found that Mitsubishi infringed GE’s U.S. Patent No. 7,629,705 and awarded GE $170 million.

 

 

Companies and Conferences Tout New WindMade Certification

June 18th, 2012

WindMade is a new certification label for companies that obtain at least 25% of their electricity from wind power.

Recently, Danish hearing aid manufacturer Widex became the first company in the world to receive the WindMade label.  A wind turbine supporting 95% of Widex’s energy use, including production, put the company well above the percentage threshold required to earn the WindMade certification.

The certification allows companies to convey to consumers their commitment to renewable energy sources, thus giving customers the opportunity to support companies and products that use wind power to satisfy a significant portion of their energy needs.

According to the WindMade web site, Danish wind turbine manufacturer Vestas Wind Systems A/S was a founding partner of the WindMade program and is still a lead sponsor. 

Vestas filed a U.S. service mark application for the WINDMADE design mark (shown above) in December 2011.  WindMade asbl, a Belgian company, is the current owner of U.S. Application Serial No. 79/105,250, which claims priority to European Community Trade Mark No. 009629445.

The WindMade label, which is supported by the UN Global Compact, is not limited to companies; it also certifies events that procure 100% of their electricity footprint from renewable power sources. 

The first event to be WindMade certified was the European Wind Energy Association’s 2012 Conference & Exhibition in Copenhagen (see the press release here), and the first North American event to receive the WindMade label was the American Wind Energy Association’s WINDPOWER 2012 Conference & Exhibition (see the press release here).

Although the WindMade label is currently used solely at the corporate level, companies will be able to attach the certification to products in the near future and could enjoy increased profits as a result.  Morten Albaek, Senior Vice President of Global Marketing and Customer Insight at Vestas Wind Systems A/S, reports that “67 percent of 31,000 consumers globally have told us they would favor WindMade products, even at a premium.” 

Product level WindMade designation is expected to be announced in the first half of 2013.

*Natalie Kleffman is a contributor to Green Patent Blog. Natalie will be entering her third year at University of California, Berkeley School of Law (Boalt Hall) in August and is currently a summer associate at McKenna Long & Aldridge LLP in San Diego, California.