Green Patent Blog is on vacation.

There have been several green patent complaints filed in the past several weeks in the fields of biofuels, LEDs, lithium ion batteries, and industrial water purification.

Biofuels

Gevo, Inc. v. Butamax Advanced Biofuels, LLC and E.I. DuPont De Nemours and Co.

On April 10, 2012, Gevo filed suit against Butamax and DuPont in the United States District Court for the District of Delaware alleging Butamax and DuPont are infringing one of its patents related to the production of isobutanol.  This suit is the latest salvo in litigation between Gevo and Butamax.  (see previous posts here, here, here, and most recently here.)

The asserted patent is U.S. Patent No. 8,153,415, entitled “Reduced By-Product Accumulation for Improved Production of Isobutanol” (the ‘415 Patent).  The ’415 Patent issued on April 10, 2012, the same day Gevo filed this latest suit against Butamax. 

According to the complaint (Gevo-Butamax_Complaint-4-10-12), the ‘415 Patent describes “recombinant isobutanol-producing microorganisms containing a disruption in the expression or activity of an endogenous 3-keto acid reductase activity and methods for producing isobutanol using such organisms.”

Gevo’s complaint alleges Butamax makes infringing microorganisms to produce isobutanol through deletion or inactivation of the YMR226c gene.  Gevo claims Butamax describes its infringing process in PCT Publication No. WO/2011/159853, entitled “Recombinant Host Cells Comprising Phosphoketolases”, and PCT Publication No. WO/2011/159998 entitled “Production of Alcohol Esters and In Situ Product Removal During Alcohol Fermentation”.

Gevo is seeking preliminary and permanent injunctions and damages.

LEDs

Whelen Engineering Company, Inc. v. CPS Emergency LED Lighting & Equipment

Filed March 29, 2012 in the United States District Court for the District of Connecticut, Whelen’s complaint (Whelen Complaint) alleges CPS infringed U.S. Patent Nos. 6,641,284, entitled “LED Light Assembly”, and D500,384, entitled “Reflector for Light Assembly”.

Whelen also alleges CPS has infringed several of its trademarks.  The marks at issue are Whelen’s LINEAR-LED, FREEDOM and VERTEX marks.  Whelen claims CPS has either used identical marks or confusingly similar marks.

Whelen is seeking treble and punitive damages and injunctive relief.  They are also seeking CPS’s alleged infringing products be destroyed.

Lektron, Inc. v. iLight Technologies, Inc.

Lektron, Inc. v. Philips Solid-State Lighting Solutions, Inc.

Lektron, Inc. v. The Sloan Company, Inc. dba SloanLED, Inc.

On April 6, 2012, Lektron filed three separate suits in the United States District Court for the Northern District of Oklahoma alleging that iLight, Philips and SloanLED have each infringed U.S. Patent No. 6,361,186 entitled “Simulated Neon Light Using LED’s” (’186 Patent).  (Each complaint can be viewed here: (Lektron-iLight Complaint) (Lektron-Philips Complaint) (Lektron-Sloan Complaint)).

The ’186 Patent describes a product designed to replace traditional neon lights with a more durable product that consumed less energy by replacing fragile glass tubes with energy efficient LED lights.  The Lektron product is sold under the LEON trademark.

Lektron is alleging direct infringement and is seeking injunctive relief and damages from each defendant.

Everlight Electronics Co. Ltd., and Emcore Corporation v. Nichia Corporation, and Nichia America Corporation

On April 19, 2012, Everlight filed suit against Nichia (Everlight-Nichia Complaint) in the United States District Court, Eastern District of Michigan, Southern Division, seeking declaratory judgment for patent non-infringement, invalidity, and unenforceability of two of Nichia’s patents, and alleging Nichia is infringing one of its patents.

Everlight is seeking declaratory judgment for patent non-infringement, invalidity, and unenforceability of two patents owned by Nichia:  U.S. Patent Nos. 5,998,925 entitled “Light Emitting Device Having a Nitride Compound Semiconductor and Phosphor Containing Garnet Fluorescent Material” (’925 Patent), and 7,531,960 entitled “Light Emitting Device with Blue Light LED and Phosphor Components” (’960 Patent).

Nichia recently filed suit against an Everlight customer in a Tokyo District Court asserting the Japanese counterpart to the ’970 Patent (Japanese Patent No. 4350094).  Nichia also filed suit against Everlight in Germany asserting the European counterpart to the ’925 Patent (European Patent No. EP 0 936 682). 

According to the Everlight complaint, Nichia has threatened litigation over several other patents in Japan, and Everlight prevailed in a patent infringement action initiated by Nichia in Taiwan.  This suit, filed by Everlight, is in response to the suits Nichia has filed and the threats Nichia has made to Everlight’s potential clients.

In addition to seeking declaratory judgment for non-infringement and invalidity, Everlight is seeking declaratory judgment that the ’960 and ’925 patents are unenforceable due to fraud and inequitable conduct during prosecution by Nichia.

Everlight is also asserting that Nichia infringes U.S. Patent No. 6,653,215 entitled “Contact to N-GaN with Au Termination” (’215 Patent).  Everlight is seeking damages, attorney fees and costs.

Lithium Ion Batteries

Energizer Holdings, Inc., Eveready Battery Company, Inc., v. Wahl Clipper Corp., and Wahl Clipper Ningbo Ltd.

Filed April 11, 2012 in the United States District Court for the Northern District of Illinois, Eastern Division, Energizer’s complaint (Energizer_Complaint) alleges that Wahl infringes several of its patents.  The patents in dispute are U.S. Patent Nos.:

5,290,414 entitled “Separator/Electrolyte Combination For a Nonaqueous Cell”;

7,923,138 entitled “Housing for a Sealed Electrochemical Battery Cell”;

7,968,230 entitled “High Discharge Capacity Lithium Battery”;

8,007,940 entitled “Separator/Electrolyte Combination For a Nonaqueous Cell”; and

RE41,866 entitled “Nonaqueous Electrochemical Cell with Improved Energy Density”.

Energizer claims Wahl makes, offers for sale, imports and is selling products containing the asserted patents in its Lithium Pen Trimmer.  They are seeking preliminary and permanent injunctions, treble damages and attorney fees.

Water Purification

Aquatech International Corp., and Debasish Mukhopadhyay v. N.A. Water Systems, LLC, and Veolia Water Solutions & Technologies Support

On April 4, 2012, Aquatech filed suit in the United States District Court for the Western District of Pennsylvania against Water Systems and Veolia Water seeking a declaratory judgment that U.S. Patent No. 7,815,804, entitled “Method for Treating Wastewater or Produced Water” (’804 Patent), owned by N.A. Water and Veolia ( a subsidiary of N.A. Water), is invalid and unenforceable and that its products do not infringe the ’804 Patent. (Aquatech Complaint)

Aquatech owns U.S. Patent Nos. 5,925,255 entitled “Method and Apparatus for High Efficiency Reverse Osmosis Operation” and 6,537,456 entitled “Method and Apparatus for High Efficiency Reverse Osmosis Operation” (though these patents are not asserted in this complaint). 

Aquatech’s patents related to its HERO water purification process.  The HERO process uses the patents in a high efficiency reverse osmosis water purification process which is used in many industries including power generation, petrochemical, and microelectronics.  The HERO technologies have been licensed to companies such as General Electric and Intel.

Aquatech claims N.A. and Veolia have coerced and intimidated potential customers into using Veolia’s OPUS water purification process (described in the ’804 Patent) under threat of patent litigation – claiming the HERO process infringes upon the OPUS process.  Aquatech claims Veolia knew, or should have known, that the HERO process does not infringe the OPUS process and that such claims of infringement were false.

Aquatech is seeking a declaration that the HERO process does not infringe the OPUS process, that each claim of the ’804 patent is invalid, and that the ’804 Patent is unenforcable due to inequitable conduct.

As readers of this blog know, the Korean Intellectual Property Office (KIPO) offers a “super speed” fast track program for patent applications directed to green technology inventions.

However, to qualify for this program the invention must have received funding or a green certification from the Korean government, and only Korean corporations are eligible to petition for the certification. 

In other words, if an applicant from the U.S. or any other country wishes to receive the benefits of the one-month fast track program and has not received Korean government funding, the applicant would have to register as a business entity in Korea to petition for the certification.

Since a patent applicant is required to submit the green technology certificate to apply for the one-month fast track program, a non-Korean patent applicant who cannot petition for the certificate before registering as a Korean business entity is, in effect, forbidden from applying for the one-month fast track program.

This different treatment of non-Korean applicants may be a violation of certain international treaties relating to trade and intellectual property, particularly Trade-Related Aspects of Intellectual Property (TRIPS) and the General Agreement on Tariffs and Trade (GATT).

Members of the World Trade Organization (WTO) such as Korea are bound by TRIPS and other multilateral treaties, e.g., GATT, which constitute an integral part of WTO agreements. 

Under Article 3.1 of TRIPS, the national treatment obligation, a member “shall accord to nationals of the other Members treatment no less favorable than it accords to its own national with regards to the protection and enjoyment of intellectual property.”

Article III:4 of GATT lays out a similar national treatment obligation.  According to the jurisprudence of GATT Art. III:4, if there is a detrimental effect on an imported product resulting from a procedure implemented by a member state, and that detrimental effect is not explained by factors or circumstances unrelated to the foreign origin of the product, the procedure implies less favorable treatment to imports.

Although patent applications and IP rights are not “goods” the basic principles of GATT are applicable to TRIPS.  Furthermore, since the national treatment obligation has long been a cornerstone of the WTO and a fundamental principle underlying GATT, the jurisprudence on GATT Art. III:4 is useful in constructing the national treatment obligation of TRIPS Art. 3.1.

The recently signed U.S.-Korea Free Trade Agreement (UKFTA) may also be relevant here as it mimics the language of TRIPS Art. 3.1 in UKFTA Art. 18.6 (“In respect of all categories of intellectual property … each Party shall accord to nationals of the other Party treatment no less favorable than it accords to its own nationals with regards to the protection and enjoyment of such intellectual property…”).   

Here, applicants for the KIPO’s one-month fast track program who are foreign nationals must go through the additional hurdle of registering with the Korean government as business entities (e.g., individual business owner, or corporation) to petition for green technology certification. 

Arguably, KIPO’s implementation of the one-month fast track program constitutes less favorable treatment to non-Korean applicants, since they cannot apply for the program due to their status as foreign nationals, while Korean business entities can apply for the program and receive the benefits of early patent grants. 

KIPO’s practice of subjecting foreign applicants to the additional procedure of registering as a Korean business entity before they can receive the benefits of the one-month program may constitute “less favourable treatment” accorded to foreign nationals. 

Accordingly, current KIPO practice of requiring a green technology certificate in order to apply for the one-month fast track program may be a violation of TRIPS Art. 3.1 and UKFTA.

*Ji Young Park is a J.D. candidate at Notre Dame Law School, Senior Article Editor for Notre Dame Journal of Legislation, and a Korean patent attorney.

The 2011 roundup found that granted green patents were at an all time high of 2331 for last year, a rise of 450 patents, or 24%, over 2010.

Always an interesting read, the CEPGI is quarterly publication that tracks grants of U.S. patents directed to clean energy technologies.

The 2011 CEPGI technology breakdown showed wind patents with the biggest gain, up over 85%, growing from 245 patents in 2010 to 455 last year.  Solar patents rose almost 50%, hybrid/electric vehicle patents were up 20%, tidal energy patents rose 50%, and biomass/biofuel patents jumped by 65%.

While fuel cell patents were down 44 patents over 2011, this sector was still the winner in total patent grants with 952.  Solar took second place with 541 patents, and wind was third with 455 patents.

There were 203 hybrid/electric vehicle patents granted in 2011, with 104 biomass patents, and 60 tidal energy patents.

The number one green patent holder for 2011 was GE, with 184 patents.  Samsung, with 128 patents, took second place, with GM in third place with 127.  Toyota and Honda took fourth and fifth place, respectively, with 114 and 79 patents each. 

The rest of the top ten green patent holders consisted of Vestas, Mitsubishi, Nissan, Panasonic, and Siemens.

The CEPGI also includes more detailed data broken down by subsector and geography.  More info on the CEPGI can be found here.

Scheduled for June 27-29, 2012, this conference will bring together attorneys, in-house professionals, investors and government officials for two and a half days of discussion on green IP issues.

With Michael Wise of Perkins Coie, I will be speaking on international protection of green IP rights. 

Other presentations will address patent portfolio valuation, licensing green technologies, the law of obviousness in green tech patent prosecution, maximizing the value of a green IP portfolio, and green branding and advertising.

The conference brochure contains more detailed information.

As a speaker, I am pleased to offer my readers a $200 discount off the current early bird conference registration price.  The discount code is GPB 200, and this early bird price ends May 4th.  Registration info can be found here.

I hope to see you there.

But there’s a lot more to this story than meets the eye.  Though INPI joins several other national intellectual property offices around the world in offering a green patent fast track, this is not simply another instance of such a program.

This is because, with respect to green patents, Brazil is not like any of the other countries that offer accelerated examination programs.

With the launch of this pilot program, Brazil becomes the first of any emerging market or developing country to signal anything remotely resembling a positive view of patents directed to green technologies and their role in combating climate change. 

Along with China and India, Brazil has been at the forefront of the G77 nations pushing to weaken or eliminate intellectual property rights in green technologies in the UN climate change treaty discussions over the last several years (see, e.g., my previous post here).

These countries have been arguing that IP rights act as a barrier to transfer and deployment of green technologies and have proposed a host of policy prescriptions to remove that perceived barrier. 

Those include compulsory licensing for such technologies, guaranteed access to green technologies on royalty-free terms, excluding green technologies from patent protection, and revoking existing patents on green technologies.

Consider these sentiments expressed by Haroldo de Oliviera Machado Filho, a senior climate change advisor to the Brazilian government, in 2009 in the run-up to the UN Copenhagen meeting (see articles here and here):

Leaders should consider the possibility of allowing “compulsory licensing” for green technologies.

Intellectual property systems are seen as “a significant barrier” in transferring technology from rich to poor nations.

“With [global warming mitigation] technologies there should be an understanding that patents must not be an obstacle for developing countries.”

But the launch of INPI’s green patent fast track last week obviously sends a different message and apparently signals a reversal in Brazil’s policy toward green patents. 

Consider this from Douglas Santos Alves, a researcher at INPI who participated in developing the pilot program:

“We will accelerate because we want clean technology to get to society soon…We cannot wait six years for an environmental solution to be applied in the market.”

Clearly, Brazil has reached an inflection point in its attitude toward green patents. 

So what happened in the last three years to cause this 180 degree turn? 

I don’t have a definitive answer, but there are some clues.

Brazil is a global leader in at least one green technology area:  biofuels.  The country has been making ethanol from sugar cane for years and has developed a sustainable market around it.

Thus, Brazil has some important domestic biofuels champions such as Cosan, a major ethanol producer.

This success has also attracted the attention and business of many American companies, from oil giants such as Shell to biofuels startups like Amyris and Solazyme.

All of these players need patent protection in Brazil and may have been turned off by the unduly long (5+ years) average application processing time in INPI.

This reversal by Brazil may represent a significant moment in green patent history.

I suspect it’s just a matter of time before other BRICs and developing countries that have been united against green patents break from the past and join Brazil in respecting and promoting them. 

China, in particular, with its strong solar industry, seems a likely candidate for the next BRIC to fall.

In previous posts (here and here), I discussed the IP litigation in China between American Superconductor (AMSC) and Chinese wind energy system maker Sinovel.

The of heart of the dispute is AMSC’s allegations that Sinovel misappropriated its propietary software code for controlling wind turbines and power converters.  

Specifcally, AMSC accuses Sinovel of copyright infringement and theft of trade secrets by Sinovel’s unauthorized use of the turbine control software source code and the binary code, or upper layer, of its software for the PM3000 power converters used with Sinovel’s 1.5 MW turbines.  The control software was developed by AMSC for use with Sinovel’s turbines.

The litigation has involved four separate actions by AMSC in various forums in China.

At least one of those lawsuits has begun its ascent through the Chinese appellate courts. 

Earlier this month, the Hainan Supreme Court affirmed a lower court decision dismissing AMSC’s copyright infringement action.  The Hainan Province No. 1 Intermediate People’s Court had thrown out AMSC’s suit on jurisdictional grounds after Sinovel filed a motion to dismiss in December.  

In the motion, Sinovel argued that the case should be governed by the Beijing Arbitration Commission, which is hearing separate contractual disputes between AMSC and Sinovel.

According to this Recharge piece, the Hainan case was brought against Dalian Guotong, a power converter maker partially owned by Sinovel, and Huaneng Hainan Power Company.

This action is AMSC’s smallest case by dollar amount, in which the company had requested about $200,000 in damages as well as a cease and desist order.

Nevertheless, AMSC has filed an appeal with China’s highest court, the Supreme People’s Court.  Recharge reports that AMSC did not receive any immediate indication as to when, or even if, the China Supremes will grant the appeal and hear the case.

We will continue to follow these cases as the effectiveness of intellectual property enforcement in China remains an open question of increasing importance to the clean tech industry.

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

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

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

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

U.S. Patent No. 5,354,477 (Water Purification) entitled “Low Molecular Weight Amines and Amine Quaternaries for the Removal of Soluble Organics in Oil Field Produced Water.”  The patent describes a method for removing hydrocarbons from water by injecting low molecular weight amines and preferably amine quaternaries with strong acids into an oil and water mixture to remove oil based salts.  Filed April 7, 1992; issued October 11, 1994; expired April 7, 2012.

U.S. Patent No. 5,324,433 (Soil/Water Restoration) entitled “In-situ Restoration of Contaminated Soils and Groundwater.”  The patent describes a method for removing and stabilizing in-situ soluble heavy metal contaminants from soil and groundwater by injecting an aqueous solution of naturally occurring ions.  The solution solubilizes the heavy metals into solution where they can be removed.  Filed April 16, 1992; issued June 28, 1994; expired April 16, 2012.

U.S. Patent No. 5,261,970 (Photovoltaic Cells) entitled “Optoelectronic and Photovoltaic Devices with Low-Reflective Surfaces.”  The patent describes photovoltaic devices with low angle ‘V’ shaped grooves on the target surfaces.  The grooves increase the efficiency of the devices by promoting internal reflection of light from the target surface at the interface of the coverglass.”  Filed April 8, 1992; issued November 16, 1993; expired April 8, 2012.

U.S. Patent No. 5,260,588 (LEDs) entitled “Light Emitting Diode.”  The patent describes a light emitting diode formed as reverse mesas with mirrored sloping surfaces which reflect light in the direction of the light emitting diode surface, improving the efficiency of each diode.  Filed April 14, 1992; issued November 9, 1993; expired April 14, 2012.

U.S. Patent No. 5,317,979 (Greenhouse Gas Emissions Reduction) entitled “Method and Apparatus for the Complete, Dry Desulphurization of Combustion Waste Gases Comprising SO2 and Dust.”  The patent describes a method for removing SO2 from the combustion waste gases of coal dust.  The process includes heating the gas quickly to a temperature below the sintering temperature of the fly ash, then cooling the gas to a temperature where the distance between the temperature and the dew point is low and is below 25 degrees C.  This binds the SO2 gas to the ash, cleaning it from the combustion waste gas.  Filed April 16, 1992; issueed June 7, 1994; expired April 16, 2012.

David Gibbs is a contributor to Green Patent Blog.  David is currently in his third and final year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Geology from the University of California, Berkeley.

Today the National Institute of Industrial Property (INPI) of Brazil launched a pilot program to accelerate green patent applications (see the Folha news piece here).

The goal of the program is to reduce the period of examination of patent applications related to green technologies to less than two years.  Average prosecution time is five years and four months.

The pilot program will be limited to domestic filings (resident or non-residents) and limited to the first 500 petitions granted.

Eligible green technologies (with final determination for entry into the program being governed by a technical committee of INPI) fall under the following categories: alternative energy, transportation, energy conservation, waste management and agriculture.

The requirements to participate in the pilot program are:

The application is a utility patent application;

The application is a national application (resident or non-resident);

The application was filed with INPI on or after January 2, 2011; and

The application contains a maximum of 15 claims in total, with up to three independent claims.

Requests to enter the pilot program also require submission of a form specific to the pilot program and a request for examination (if not already requested) and early publication.

More information (in Portuguese) can be found on the INPI web site here.

Brazil’s INPI joins several other national intellectual property offices that offer expedited examination for green technologies, including the UK Intellectual Property Office, the Korean Intellectual Property Office, the Japanese Patent Office, the Canadian Intellectual Property Office, the Israel Patent Office, and IP Australia.

*Marcelo König Sarkis, P. Eng., FIPIC, is a Senior Patent Agent and Professional Engineer with Heenan Blaikie LLP.  He is a member of Heenan Blaikie’s Intellectual Property as well as Climate, Cleantech and Sustainability Groups.

As noted in a previous post, solar patent litigation has begun to move upstream to encompass photovoltaic manufacturing equipment. 

Some recent public statements by PV production equipment maker Silicon Genesis (SiGen) about startup equipment vendor Twin Creeks Technologies (Twin Creeks) hint at more upstream solar patent trouble on the horizon. 

This Greentech Media story quotes a SiGen press release in which the company said it was “closely following” Twin Creeks announcements of a process “similar to [SiGen's] beam-induced wafering…”  Additional SiGen statements and intimations included the following:

As the pioneers of beam-induced wafering and assuming it is not utilizing any of our technology embodied in our 100+ U.S. patent portfolio which we are monitoring…

The fact that Twin Creeks Technologies was founded by a venture capital firm shortly after it evaluated SiGen’s beam-induced wafering business plan and technology, including our prototype 2 million electron volt implanter is of concern.

According to Cleantech PatentEdge™, SiGen owns at least 24 US, European, and international patents and applications, including U.S. Patent No. 7,687,786, entitled ”Ion implanter for non-circular wafers” and 7,750,322, entitled “Ion implanter for photovoltaic cell fabrication” (Ion Implanter Patents).

The Ion Implanter Patents are directed to an ion implanter (100) comprising an ion source (120), a high-voltage extraction assembly (130), a dipole filter magnet (140), an accelerator (150), and an endstation (160).  The accelerator (150) applies an accelerating voltage between the dipole filter magnet (140) and the endstation (160).

This brings ions in the ion beam (145) to the implant energy necessary to shoot the ions into a silicon wafer before they reach the endstation (160).  The endstation (160) includes a disk (162) with pads (182) disposed around it.  The ion beam (145) irradiates silicon wafers disposed on the disk between inside circle (184) and outside circle (186), and the ions settle into the wafers at a finite depth. 

According to the same Greentech Media piece, the ions are then heated, and the result is a silicon wafer that cleaves off the substrate along the crystalline plane.

According to Cleantech PatentEdge™, Twin Creeks owns 48 US, European, and international patents and applications, including two recently issued patents relating to ion implanters, U.S. Patent Nos. 7,989,784, entitled “Ion implantation apparatus and a method” and 8,044,374, entitled “Ion implantation apparatus” (Implantation Apparatus Patents).

The Implantation Apparatus Patents are directed to an ion implantation apparatus comprising a process chamber (10) having part spherical upper and lower walls (12, 13), a high-voltage enclosure (15), and an accelerator tube (18), which interconnects the the high voltage part of the vacuum chamber within the enclosure (15) and the process chamber (10). 

The process chamber (10) contains a process wheel (14).  Substrates for processing are carried in the process chamber (10) about the periphery of the wheel (14).

A beam of ions for implantation is produced in an ion source structure (16) within the high voltage enclosure (15) and directed into the magnet structure (17).  The magnet structure (17) bends the ion beam so that unwanted ions can be filtered from the continuing beam, which is directed towards the process chamber (10).

The acclerator tube (18) includes an electrically insulating element to allow the ion source and structures (16, 17) to be held at very high voltage and contains electrostatically biased electrodes to accelerate the ion beam to the required implant energy for delivery to the process chamber (10).

As mentioned above, solar cell manufacturing equipment has previously been the subject of patent litigation.  One lawsuit involved competitors Despatch Industries and TP Solar (TP) and their manufacturing equipment used for heat-treating silicon wafers for solar cells.  That case ended in a victory for TP.

Ion implantation may be the next upstream solar patent battleground.