Light-Pod is a Philadelphia area company that designs solid state lighting fixtures for the military and commercial businesses.  A recent lawsuit involving the company is a cautionary tale about an LED patent and technology licensing deal gone bad.

In a complaint filed earlier this month in New Jersey, Light-Pod accuses Laser Energetics of breach of contract, fraud, and deceptive trade practices (among other things) for allegedly misrepresenting its financial and business status and failing to make payments under the licence agreement.

In March 2012 the two companies entered into an exclusive license agreement under which Light-Pod granted to Laser Energetics an exclusive license to its lighting fixture technology, patent rights, know-how, and other IP rights.  The technology involved relates to military qualified LED driver designs and new LED optical and fixture designs for Navy fixtures.

Light-Pod owns at least two U.S. patents and one pending patent application, U.S. Patent No. 7,637,628, U.S. Patent No. 7,993,032 and U.S. Application Publication No. 2011/0285041, each entitled “LED light pod with modular optics and heat dissipation structure.”

According to the complaint, Laser Energetics made a number of material misrepresentations to induce Light-Pod to enter into the licensing deal.  These included:

that Laser Energetics was well funded and had sufficient infrastructure and resources to properly develop, manufacture, market and sell the lighting fixtures;

that Laser Energetics had the financial means to make monthly payments to Light-Pod;

that Laser Energetics had an agreement with a company called CACI International to provide funding to help launch the lighting fixtures;

that Laser Energetics had an agreement with the Saudi Arabian government to purchase its technology;

that Laser Energetics had developed a legitimate business plan projecting light fixture sales of over $250 million over seven years; and

that Laser Energetics was hiring a particular individual as lead engineer in connection with production of the light fixtures.

The narrative in the complaint indicates that Laser Energetics initially approached Light-Pod about a potential licensing deal in January 2012, and the agreement was executed on March 9, 2012. 

One wonders if a longer negotiating timeline with more due diligence on the front end might have avoided the need for litigation on the back end.

A few years ago, during the height of the green patent fast track craze, I wrote a post on clean tech companies generating PR about their patent applications being accepted into an accelerated examination program or being granted by such a program.

Though the excitement has died down and the USPTO green tech fast track was closed last year, green patent PR remains alive and well. 

In the past few weeks Biofuels Digest picked up two such stories.  The first was about a Notice of Allowance received by a Canadian company called CO2 Solutions for a patent application entitled “Methods and formulations using carbonic anhydrase and reaction compound combinations.”

The second piece reported the issuance of U.S. Patent No. 8,420,782, entitled “Molecular DNA-binding domains and methods of use” and related to gene editing based on the use of TAL effectors.  The patentee is Illinois-based Two Blades Foundation.

The patent PR in the clean tech industry sparked my interest in the broader phenomenon of PR materials concerning patent matters.  I was curious to find out to what extent this was occurring in other industries, and exactly what types of subject matter are involved when patentees generate media content about their patents.

So a few months ago, I started researching the subject matter technology firms are communicating when they generate PR content concerning patents (see the Abstract here).  I compiled and analyzed a random set of 414 patent-focused press releases generated by patentees, or their licensees, from 2008 to March 2013 and catalogued the subject matter contained therein. 

The data set enabled me to create a taxonomy of patent-focused PR content.  As it turns out, the subject matter of patent PR can be broken down into the following top-level categories:  (1) prosecution; (2) litigation; (3) transactional matters; (4) post-grant procedures; (5) patent-related honors/accolades; (6) patented or patent pending products; and (7) ANDA patent challenges.

Most of the top-level categories can be further divided into second-level subject matter categories.  In the patent prosecution category, for example, the study calculates the proportion of press releases involving (a) patents granted; (b) Notices of Allowance issued; (c); applications filed; (d) applications pending; and (e) responses to office actions filed.

So the CO2 Solutions story would be categorized as Prosecution; Notice of Allowance issued.  The Two Blades Foundation article would be Prosecution; Patent granted.

Within the patent litigation category I found that the largest proportion of press releases relates to settlement of litigation, perhaps reflecting the reality that most patent cases settle but also suggesting that firms may believe it more beneficial to report early resolution of patent litigation than enforcement activity or court victories. 

As to industry statistics, my preliminary results indicate that pharmaceutical firms generate the largest proportion of press releases, a finding consistent with the importance of patents to the pharmaceutical industry.  The clean tech industry is in fifth place with 9.2% of press releases in the data set.

I’m hoping that the data I present in this study will help to elucidate which patent-related events technology firms believe are important to highlight and provide a foundation for subsequent inquiries into how patent PR may affect public opinion of patents and patentees.

BioGasol is a Danish company that has developed a biomass pre-treatment system comfortably situated upstream in cellulosic biofuels production.  The system, called Carbofrac, provides more efficient and lower cost biochemical conversion of lignocellulosic feedstocks such as wood and agricultural waste.

The company owns at least nine U.S. patents and published applications, including U.S. Application Publication No. 2012/0100045 (’045 Application), which covers the pre-treatment system.

The ’045 Application is entitled “Apparatus for rapid mixing of media and method” and directed to an apparatus (100) for processing at least two media.  The apparatus (100) has a reaction chamber (102), a casing (108), at least two inlets for a materials to be processed and another medium, a rotating means (111), a series of rotating elements (110), and a lid (104).

The reaction chamber casing (108) has a conical shape to facility flow of the materials toward the lid (104), and the inlet is adapted so the material to be processed moves in a direction parallel to the radius of the rotating means (111).

The second figure shows the reaction chamber (102) in more detail.  Rotating elements (205, 206) generate a vortex inducing mixture and transport of the feedstock material, thereby optimizing release of a medium such as steam or a chemical reagent and providing for a rapid interaction between the medium and the feedstock:

The rotating discs are designed in order to provide comminution, dispersion and fluffing of the pulp introduced and exposure of said material to a medium, i. e. gas or liquid, to produce a rapid interaction. The rotating discs are designed in order to optimize the medium release at the instant of comminution, dispersion and fluffing.

According to the ’045 Application, the “comminution and the dispersion effect” of the rotating elements cause “an instantaneous inclusion of the injected medium in the pulp” which, in turn, leads to reduced reaction time:

This allows localized and immediate contact between the freshly dispersed and comminuted pulp and the chemical reagent causing a fast and efficient reaction between the two. Reaction time is therefore reduced since the chemical reagent is put in intimate contact with the pulp minimizing the diffusion time through the pulp.

BioGasol recently delivered its first Carbofrac unit to Sweetwater Energy, a company that produces concentrated sugars for bioenergy and biochemical applications.

A previous post discussed advanced battery maker Electrovaya’s lithium ion polymer technology, which the company says provides faster, more efficient transport of lithium, and therefore greater energy density.

Several years ago, Electrovaya partnered with Tata Motors to work on batteries for electric vehicles in Norway.  Tata, in turn, had invested in a Norwegian lithim ion battery company called Miljøbil Grenland (MG).  In 2012 Electrovaya acquired MG.

In an example of green IP supporting further innovation, Electrovaya recently announced its new generation lithium ion battery technology, which it calls SuperPolymer 20.0.  According to its press release, the MG IP was key to the development of the new battery tech:

The module-level and system-level improvements are a result of intensive development at Electrovaya as well as the addition of intellectual property acquired from Tata Motors through the August 2012 acquisition of Miljobil.

MG is listed as the applicant on at least one international patent application, PCT/IB2011/054738, entitled “Method for manufacturing of slurry for production of battery film” (’738 Application).

The ’738 Application is directed to methods for manufacturing a slurry for coating cathode and anode materials in batteries.  More particularly, the invention offers an alternative to the use of solvents for coating the electrode foils.

Some of the solvents used to coat battery electrodes are toxic, flammable, or damaging to the chemical structure of the finished battery.  Thus, it is important to fully remove the solvent from the battery film during production, but removing the last remnants of the solvent down to ppm level is difficult and energy intensive.

The ’738 Application describes and claims a 7-step method including mixing active materials with a binder into a binder solution, adding an organic carbonate to the binder solution to form a slurry, coating an electrode material with the slurry, evaporating the coating by drying the carbonate, and surface treatment (rolling, baking and finishing) of the electrode material.

According to the ’738 Application, use of the slurry instead of a solvent to coat the electrode is a better solution because the liquid slurry becomes a component of the battery electrode so it does not need to be completely removed:

By using a liquid which is entered as a component in the finished battery it is not necessary that the liquid is removed completely.  This component will still be added at a later stage in the process.  According to the execution of the available invention, a method for manufacturing of the slurry for coating of battery electrodes is provided, where the slurry, meaning active components and a binder will be diluted with a diluting agent, where the diluting agent is a component of the electrolyte which shall be used in the same lithium battery.

LED lighting remains the hottest area of green patent litigation, with several complaints filed in the last several weeks.  Green patent complaints were recently filed in the areas of advanced batteries and solar powered lighting as well.

Advanced Batteries

Celgard, LLC v. SK Innovation Co., Ltd.

Celgard is a North Carolina company that manufactures specialty membranes and separators for lithium ion batteries.  On April 26, 2013, Celgard filed a patent infringement complaint against SK Innovation (SK) in federal court in Charlotte, North Carolina.

The complaint alleges that SK is directly infringing and inducing infringement of U.S. Patent No. 6,432,586 (’586 Patent) by selling lithium ion battery separators to its customers knowing that the separators will be incorporated into finished lithium ion batteries.

The ’586 Patent is entitled “Separator for a high energy rechargeable lithium battery” and directed to a separator including a ceramic composite layer and a polyolefinic microporous layer.  The ceramic layer has a matrix material and is adapted to block dendrite growth and prevent electronic shorting.

Celgard asserted the ’586 Patent against Sumitomo in February.

Solar Powered Lighting

Richmond v. Lumisol Electrical Ltd. et al.

On March 27, 2013, Simon Nicholas Richmond filed suit against a number of defendants including Lumisol Electrical, Ningbo Hangshun Electrical, and Costco for alleged infringement of three U.S. patents relating to a solar power lighting assembly and one patent relating to a wind indicator illuminated by solar power. 

The asserted lighting assembly patents are part of the same family and include U.S. Patent Nos. 7,196,477, 7,429,827 and 8,362,700, each entitled “Solar powered light assembly to produce light of varying colors.”  The fourth patent is U.S. Patent No. 8,089,370, entitled “Illuminated wind indicator.”

The accused products include the Color-Changing Sun and Moon Solar Stake Path Light sold under the brand name Celestial Series Sun and Moon Light.

LEDs

Lighting Science Group Corporation v. Cree, Inc.

Florida LED lighting company Lighting Science Group (LSG) recently sued North Carolina-based Cree for infringement of U.S. Patent No. 8,201,968, entitled “Low profile light” (’968 Patent).

Filed April 10, 2013 in federal court in Orlando, the LSG complaint alleges that Cree infringes at least claims 1-6, 9, 14, 17-20 and 22 of the ’968 Patent by its manufacture and sale of the T67 LED Downlight product.

The ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.

Nicholas Holiday, Inc. v. 1 Energy Solutions, Inc.

On April 1, 2013, Nicholas Holiday brought a declaratory judgment action against 1 Energy Solutions (1 Energy) in U.S. District Court for the District of South Carolina. 

The patent at issue is 1 Energy’s U.S. Patent No. 7,045,965 (’965 Patent), granted in 2006, and issued as a reissue patent on January 1, 2013.  The ’965 Patent is entitled “LED light module and series connected light modules” and relates to a more reliable light module having LEDs connected in parallel for use in light strings such as Christmas lights.

According to the complaint, Nicolas Holiday has intervening rights because it began making and selling various light string sets in 2008, including the Energy Smart LED C-5 and the Energy Smart 50 LED Colorite Miniature Lights light string products. 

Nicholas Holiday is requesting a declaratory judgment that the reissue patent is invalid, its products do not infringe the reissue patent, and that it may continue to make, use and sell its LED light string products.

Relume Corporation Trust v. Swarco America, Inc. et al.

Relume filed a patent infringement complaint against Swarco and Philips Lumileds on March 27, 2013 in U.S. District Court for the District of Delaware.  The complaint asserts RE 42,161, entitled “Power supply for light emitting diode array” (’161 Reissue), which is a reissue of U.S. Patent No. 5,661,645.

The ’161 Reissue is directed to a power supply apparatus and system for providing power to LEDs, particularly LED array traffic signals.  The accused products are are Swarco’s FUTURLED ITE traffic signal modules.

Trustees of Boston University v. Amazon.com.

On May 2, 2013, Boston University (BU) sued Amazon in U.S. District Court for the District of Massachusetts.  The complaint asserts U.S. Patent No. 5,686,738 (’738 Patent). 

The ’738 Patent is entitled “Highly insulated monocrystalline gallium nitride thin films” and directed to gallium nitride semiconductor devices and methods of preparing highly insulating GaN single crystal films in a molecular beam epitaxial growth chamber.

BU allegs that certain Kindle Paperwhite and Fire devices contain infringing LEDs.

Jam Strait, Inc. v. Osram Sylvania, Inc.

A Mississippi company called Jam Strait recently sued Osram Sylvania in U.S. District Court for the Eastern District of Louisiana for alleged infringement of a patent relating to LEDs used in motor vehicles.

Filed April 29, 2013, the complaint asserts that Sylvania’s 168/194/2825 LED light infringes U.S. Patent No. 6,786,625 (’625 Patent).

The ’625 Patent is entitled “LED light module for vehicles” and directed to an LED lamp module for use in vehicle tail lights.  According to the ’625 Patent, the module has integrated dual element control circuitry, voltage and current control circuitry, brightness enhancement circuitry, and LED circuitry built in to produce a bright, reliable, long life, energy efficient LED lamp that fits all vehicles.

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.

A previous post reported on the acquisition of Beacon Power, formerly the largest flywheel player, after the company went bankrupt.

One of the technical hurdles faced by designers of these whirling rotational energy storage devices is that spinning masses have a natural “wobble.”  Most flywheel designers have employed expensive bearings, magnets, and materials in attempts to minimize this wobble to better align the flywheel’s axis of rotation with the rotation of a generator.

Enter Velkess, a Silicon Valley developer of new flywheel technology, which has invented a self-stabilizing design.  Velkess owns U.S. Patent Application Publication No. 2012/0096984, entitled “Flywheel system” (’984 Application).

The ’984 Application is directed to a flywheel system in which the wheel is suspended in a non-symmetric damped gimbal system (9) (a gimbal is a pivoted support that allows the rotation of an object about a single axis, commonly used in gyroscopes).  The shaft of a motor/generator (20) is attached to a flexible coupling (13), which is also attached to a rigid shaft (14).

 The rigid shaft (14) is attached at its other end to a super-circular bare filament flywheel rotor (16).  The shaft (14) can transmit high levels of torque and will not suffer the destabilizing displacement common in traditional flywheels.

According to the ’984 Application, the invention allows one axis of the gimbal to dampen the resonant frequencies in the other axis:

[T]he non-symmetric damped gimbal system 9 of embodiment 15 has two different resonant base frequencies established by the differing lengths of the pendulum that each axis 10 and 11 create. This allows one axis 10 or 11 of the non-symmetric gimbal 9 to damp the resonant frequencies in the other axis 10 or 11.

As explained nicely by Chris Nelder in a recent Scientfic American piece, this feature minimizes resonant disturbances and permits more control of the device:

The gimbal in the Velkess is asymmetrical, so the two axes of rotation—the flywheel axis as well as that of the rotor, which drives the brushless, inducting DC motor—are not on the same plane, and have different periods of frequency. This dampens the resonance effects that make traditional flywheels hard to control (a resonant disturbance in one of the planes can intensify until the device shatters). With the gimbal, resonance in one plane is translated into the other, which is nonresonant at the same frequency. Accordingly, only very loose engineering tolerances—about one sixteenth of an inch—are required to build the device.

According to Nelder, the Velkess flywheel has significant advantages over previous devices like those made by Beacon Power, including slower, longer discharge of stored energy, and scalability.  More info on the Velkess technology can be found on the company’s technology page.

The latest PCT Newsletter published by the World Intellectual Property Organisation (WIPO) is promoting the WIPO Green platform as a way to match GreenTech innovators with commercialisation partners.

The initiative from WIPO is a welcome move towards facilitating collaboration and development of green technologies which mitigate climate change, reduce environmental pollution and promote sustainable resource use.

The WIPO Green platform consists of a searchable “matchmaking” database and a service network.  Innovators can publicise their green technologies on the database and make contact with potential partners with a view to securing licensing or partnership agreements. 

The database also enables users to input specific green technology needs with calls to innovators to meet those needs with environmentally sound technologies.

The service network component of the initiative will facilitate partnerships by providing training, advice on licensing, and assistance with obtaining financial support.  It will also provide links to technology experts worldwide.

The initiative provides both technology providers and technology seekers with opportunities for collaboration with international organizations, companies, non-governmental organizations, research institutions and SMEs.

Currently, major technology providers signed up to the initiative include CERN (Switzerland), Fujitsu (Japan), General Electric Company (United States), Hitachi (Japan), Honda Motor Co. (Japan), Massachusetts Institute of Technology (United States), Stanford University (United States) and the University of Geneva (Switzerland).

Technology seekers include the Association for Environmental Management and Development (AGED) (Burkina Faso), KOE Technology Investment co., Ltd. (China), Shanghai Technology Transfer Exchange (China) and SIG (Switzerland).

Licensing of any intellectual property relating to the green technologies (e.g. patents, designs or trade secrets) will be governed by individually negotiated agreements between the parties involved.

The GreenTech category with most technologies listed on the WIPO Green database is currently alternative energy production with 22 technologies.  Other technology categories include include waste management (13 technologies), energy conservation (8), agriculture / forestry (2) and transportation (2).

The WIPO Green initiative provides much needed opportunities for all parties to engage with international organisations to develop and deploy their innovations on a global scale.

*Dr. Tim Stirrup is a Patent Attorney with Baldwins Intellectual Property in New Zealand and represents a number of clients in the Greentech sphere.

DuPont Tate & Lyle BioProducts (DPTL) is a joint venture between DuPont and Tate & Lyle which provides natural and renewably sourced industrial materials.  In collaboration with Climalife, DPTL has developed and launched a new line of heat transfer fluids (HTF) under the brand name Greenway. 

The Greenway fluids are marketed for use in solar thermal (AKA concentrating solar power) applications.  The key ingredient in the heat transfer fluids is DPTL’s Susterra brand propanediol, a bio-based glycol.

DPTL owns several patents and pending applications relating to its bio-derived propanediol (Bio-PDO), including U.S. Patent No. 7,988,883 (’883 Patent), specifically directed to use of Bio-PDO in heat transfer compositions.

Entitled “Heat transfer compositions comprising renewably-based biodegradable 1,3-propanediol,” the ’883 Patent is directed to heat transfer or antifreeze compositions comprising biologically-derived 1,3-propanediol having a bio-based carbon content of at least 1%. 

The independent claims of the ’883 Patent include a recitation that the composition “has a lower anthropogenic CO2 emission profile” compared to 1,3 propanediol with no bio-based carbon.  The Bio-PDO can be generated by genetically-engineered E.coli bacteria or other microorganisms. 

The patent makes the argument that its bio-based process is carbon-neutral.  According to the ’883 Patent, the compositions have less environmental impact because they take their carbon from plant feedstocks and release the carbon into the atmosphere to be used by plants again:

The biologically derived 1,3-propanediol (Bio-PDO) for use in the current invention, produced by the process described herein, contains carbon from the atmosphere incorporated by plants, which compose the feedstock for the production of Bio-PDO. In this way, the Bio-PDO used in the compositions of the invention contains only renewable carbon, and not fossil fuel based, or petroleum based carbon. Therefore the compositions of the invention have less impact on the environment as the propanediol used in the compositions does not deplete diminishing fossil fuels and, upon degradation releases carbon back to the atmosphere for use by plants once again. Thus, the present invention can be characterized as more natural and having less environmental impact than similar compositions comprising petroleum based glycols.

Like some of the patent litigation involving solar ovens and solar mounting systems, the Greenway HTF product containing patented propanediol is another example of green IP extending into downstream solar and penetrating the niche market opportunities offered by the clean tech industry.

I saw an interesting story at SmartGridNews.com about a Korean program to support patenting of standards for smart grid technologies.  Additional reports are at Energy Korea and Power Insider.

The Korea Smart Grid Association recently launched the initiative, which will support R&D projects conducted by companies, universities and research institutes to develop core technologies and standards for smart grid applications.

The program is sponsored by the Korea Intellectual Property Office (KIPO) and supervised by an organization called the Standard Patent Center.

The ultimate goal, it seems, is to generate patents that cover standards in the smart grid space.  Kim Yeon-ho, the Director General of the Electric and Electronic Burear at KIPO, was fairly blunt about Korea’s thought process on this:

The standard patent is a high value-added patent that can enjoy both market power and monopolistic strength of patent, which are advantages of standardization.

A major caveat to the monopoly power rationale is that the owners of patents covering industry standards are typically required to license the technology on terms that are fair, reasonable, and non-discriminatory (FRAND).

The Korea Smart Grid Association offers another explanation, claiming to be looking out for the little guy.  The Association’s Vice President, Mun Ho, said:

Given that most smart grid-related companies are small and mid-sized businesses, which are weak in coping with standard smart grid patents, the program is expected to signficantly contribute to strengthening their competitiveness.  The Association will exert continued effort to promote creation of patent standards.

In particular, the Association plans to develop flexible AC transmission systems and electric vehicle charging infrastructure technologies, create standard patents around those technologies, and then “provide results of development to small and mid-sized smart grid companies.”

At Smart Grid News, Jesse Berst’s “quick take” puts this patent program into context:

In the U.S., the smart grid has largely been about empowering customers and utilities with better information. In Korea, the smart grid is part of the country’s industrial policy and has been singled out as an important new export opportunity. [This program is] one of the steps the country is taking to make that plan into a reality.