Ford EV Patents Open, Not Free; You Can License For a Fee

June 16th, 2015 by Eric Lane No comments »

Once is an isolated incident, twice could be a coincidence, but three times – that may make a trend.  Following Tesla’s big patent giveaway about a year ago and Toyota’s fuel cell vehicle patent limited license offer a few months ago, Ford recently announced that it has “opened” its electric vehicle patent portfolio.

Don’t get too excited, though.  This one is fundamentally different from the prior patent pledges.  Ford is not donating its patents or even offering limited-time royalty-free licenses to the patents.

Rather, Ford is offering the patents for license “for a fee” as the company’s press release explains.  In view of the other automakers’ EV freebies, Ford issued a brief statement in defense of it’s for-profit licensing scheme (reproduced here from a Financial Times article):

Defending the decision to charge for the patents, the company said “We’re proud of the work that we do.”  It added: “From the research we’ve conducted already, we feel that licensing is appropriate.”

Not that there’s anything wrong with that.  To the contrary, companies should generate revenue from their R&D, their innovation, and their patents.

But the headline of the announcement obscures the fact that it’s a for-profit licensing venture (“Ford Opens Portfolio of Patented Technologies to Competitors to Accelerate Industry-Wide Electrified Vehicle Development”).

In intellectual property, the word “open” signals free use or public domain (e.g., open source), and the headline is particularly misleading in view of the recent Tesla and Toyota royalty-free patent license moves in this field.  Note Toyota’s press release also used “open” (“Toyota Opens the Door and Invites the Industry to the Hydrogen Future”).

Of course, reasonable people can differ in opinion as to whether the developing EV industry is better served by truly open patent portfolios or revenue generating licensing opportunities.  But either way, the patent holders should not mislead and should get the messaging right.

By the way, this trend of pledging patents appears to be a hot topic:  it’s the subject of a recent article by Professor Jorge Contreras called Patent Pledges and a conference held just yesterday at American University.


Automakers Make Eco-mark Progress

June 9th, 2015 by Eric Lane No comments »

Two major automakers have made progress recently in protecting their present and future brands.

In previous posts (here and here), I reported on GM’s U.S. Trademark Application Nos. 86357513 and 86357523 for BOLT and CHEVROLET BOLT, respectively, for “motor land vehicles, namely, automobiles” (BOLT Applications).

The applications ran into some hitches when the U.S. Patent and Trademark Office (USPTO) initially refused registration based on U.S. Trademark Registration No. 4,429,759, owned by Yamaha, for the mark BOLT for “Motorcycles and structural parts therefor, excluding wheels.”  According to the trademark examining attorney, there was a likelihood of consumer confusion because the marks are the same and goods are similar.

GM overcame this rejection by arguing differences between the goods and channels of trade (e.g., motorcycles and automobiles are typically sold in different dealerships).  GM also entered into and submitted to the USPTO a Consent Agreement whereby both parties consented to registration by the other of the BOLT mark for their respective goods.

However, the trademark examining attorney also suspended GM’s BOLT Applications based on provisional refusals to register the marks based on prior filed U.S. Trademark Application Serial Nos. 86108379 and 86108374 for the BOLT CUSTOM TRUCKS AND MANUFACTURING word and design marks for “truck parts, namely, a premium-outfitted truck cab.

GM was able to overcome these provisional rejections by agreeing to amend the identification of goods in their BOLT Applications to motor land vehicles, namely, automobiles in the nature of cars.”

Now both applications are moving forward toward publication and registration, assuming no third parties oppose registration.


Toyota recently prevailed in an opposition proceeding against HongKong WillRaise Integrated Circuit Company (HWICC), which had filed U.S. Application No. 86/357,165 for PRIUS for chemical flavorings for tobacco and various smoking paraphernalia (‘165 Application).

Toyota filed a Notice of Opposition in December of 2014 before the USPTO Trademark Trial and Appeal Board (Board) opposing registration of the ‘165 Application.  Recently, HWICC withdrew the ‘165 Application (HWICC Withdrawal), and because the withdrawal did not include the consent of all the parties, the Board subsequently entered judgment against HWICC.

Guest Post: Vinson Conlan’s LED Patent Update

June 2nd, 2015 by Vinson Conlan No comments »

Lighting Science Group expanded their intellectual property for their LED Disc Light (Glimpse) with three recent patents.

The trio of patents cover LED light fixtures that are low profile and designed to cover recessed light fixtures and junction boxes. Most of these fixtures look like recessed trims with a lamp or a recessed light fixture trim with a lens.

Their latest patent is written to cover fixtures that are designed to cover a recessed light fixture housing and a junction box with a driver located between the light fixture and the junction box or recessed housing. The ratio of height to diameter is not included in the first claim as it was on the original patent, U.S. Patent No. 8,201,968 (‘968 Patent).

The combination of patents covers many fixture types currently manufactured in North America. Examples of their products can be found here.

The second patent, U.S. Patent No. 8,672,518, entitled “Low profile light and accessory kit for the same”, issued March 18, 2014.

U.S. Patent No. 8,967,844, entitled “Low profile light and accessory kit for the same” (‘844 Patent), issued on March 3, 2015. This is the third of the patents issued that provides coverage for their disc light LED product.

All of the patents claim the benefit of U.S. Provisional Application Ser. No. 61/248,665, filed Oct. 5, 2009.

The following description from the ‘968 Patent has been separated into two claims in the ‘844 Patent:

wherein the heat spreader, the heat sink and the outer optic, in combination, have an overall height H and an overall outside dimension D such that the ratio of H/D is equal to or less than 0.25; wherein the combination defined by the heat spreader, the heat sink and the outer optic, is so dimensioned as to: cover an opening defined by a nominally sized four-inch can light fixture; and, cover an opening defined by a nominally sized four-inch electrical junction box.

In place of the above, claim 1 in the ‘844 Patent adds the following:

…and a power conditioner disposed and configured to receive AC voltage from an electrical supply and to provide DC voltage for the plurality of LEDs; wherein the power conditioner is disposed, configured and sized to fit at least partially within an interior space of: a nominally sized can light fixture; and, a nominally sized electrical junction box.


Another recent patent of interest

Copper Technologies (see Halo brand products) was granted U.S. Patent No. 9,010,956,entitled “LED module with on-board reflector-baffle-trim ring” (‘956 Patent). Claim 1 reads as follows:

A light module, comprising:

a heat sink comprising an internal surface surrounding a heat sink cavity formed therein, the internal surface comprising:

a mounting region; and

a reflector region extending from the perimeter of the mounting region to a distal end;

one or more light sources coupled to the mounting region within the heat sink cavity; and

a plurality of mounting pads disposed circumferentially around a portion of the heat sink to separably couple the light module to a housing having a five inch diameter cavity or a housing having a six inch diameter cavity, each mounting pad comprising:

a first receiving hole; and

a second receiving hole,

wherein either the first receiving hole or the second receiving hole is coupled to a torsion spring,

wherein when the torsion spring is coupled to the first receiving hole, the light module is coupled to the housing having the five inch diameter cavity, and

wherein when the torsion spring is coupled to the second receiving hole, the light module is coupled to the housing having the six inch diameter cavity.

One of the embodiments, which is on the shelf at a popular retail DIY chain, can be seen here.

The ‘956 Patent protects their current low cost LED trim; many low cost trims use a similar construction.


Vinson Conlan has been developing light fixtures for nearly 30 years and has spent the last 9 years specializing in LED products. He has 8 US patents and has a broad range of experience working for family owned businesses as well as Fortune 100 companies. Vinson currently heads up product development for a leading company in the solid state lighting industry.

Diverting Organic Waste and Recyclables with Integrity

May 27th, 2015 by Eric Lane No comments »

Integrity Waste (IW) is full service waste management company that specializes in collection and disposal of organic waste.  Based in Novato, California, Integrity Waste has implemented programs to handle waste in Foster City, San Rafael, Concord, and Union City.

I recently spoke with Ron Falcon, the company’s CEO, about IW’s services.  He told me that IW sorts residential waste and recycling so that harmful organic waste does not end up in landfills. To the extent recyclable materials are in the waste stream, the company also removes those, so each respective stream is “cleaner” and “less contaminated.”

IW’s business model involves teaming with municipalities to manage and dispose of organic waste, recyclables, and/or compostables in accordance with local requirements.  IW trains employees to separate the waste.

One of the important and underserved markets for these services, according to Falcon, is multi-family apartment communities.  For these and other residential communities, IW provides doorstep valet collection of waste, where the residents place the waste materials out at the allotted time and the company collects them, removes recyclables and organic waste, and takes the materials to the proper locations.

Alternatively, IW places bins on site in the residential community.  Each resident can get a compost pail and take the waste to the proper locations.  In such arrangements, IW manages the waste at the point of disposal.

When asked about intellectual property, Falcon admitted the company hasn’t thought much about branding.  However, IW does have an attractive logo (top), and Falcon told me a new one is nearly ready for release.  He didn’t provide a copy of the new design, but said it includes a man with a pail that looks like a toolbox.

One major issue IW has to be aware of is communicating clearly exactly what services it provides and the environmental benefits conferred.  Accordingly, the company is “very careful” about what it says.  Falcon said they “underpromise and overdeliver” in their communications and services.

Instead of claiming absolute numbers or percentages of organic waste properly disposed of or of recyclables actually recycled, the company communicates ranges of pounds diverted from landfill.  Last year, for example, IW helped clients divert 600,000-725,000 pounds of waste in Northern California alone.

He also noted that the company’s activities are monitored by the municipalities, by the waste haulers, and by the multifamily residences.

Falcon noted that despite the existence of recycling programs, IW’s services are sorely needed.  Even in communities that have recycling programs, multi-family residences don’t have recycling bins, he said. “This is the future.”

Clean Tech in Court: Green Patent Complaint Update

May 20th, 2015 by Eric Lane No comments »

A number of new green patent complaints were filed in the last two months in the areas of energy storage, LED lighting, and smart grid (including lighting control).


Energy Storage

Power Regeneration, LLC v. Siemens Corporation et al.

A Texas company call Power Regeneration has accused Siemens of infringing a patent relating to energy storage systems.  Filed April 6, 2015 in federal court in Tyler, Texas, the complaint alleges that Siemens’ SITRAS energy storage systems infringe U.S. Patent No. 7,085,123 (‘123 Patent).

The ‘123 Patent is entitled “Power supply apparatus and power supply method” and directed to a power supply apparatus and method wherein the non-polar characteristics of the electrodes of a capacitor are used to improve the energy utilization efficiency of a battery through reciprocating switches of polarity connection between the battery and the capacitor.  The capacitor allows for reverse charging, and the apparatus delivers a stable power output.


Koninklijke Philips N.V. et al. v. Troy-CSL Lighting, Inc.

On March 20, 2015, Philips sued Troy-CSL for infringement of seven patents relating to LEDs and LED lighting devices.  The complaint was filed in the U.S. District Court for the District of Massachusetts.

The patents-in-suit are:

U.S. Patent No. 6,013,988, entitled “Circuit arrangement, and signalling light provided with the circuit arrangement”

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

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

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

U.S. Patent No. 7,038,399, entitled “Methods and apparatus for providing power to lighting devices”

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

U.S. Patent No. 7,325,138, entitled “Methods and apparatus for providing power to lighting devices”

The accused products are Creative Systems Lighting (CSL) and Troy branded interior and exterior LED lighting products.  Philips has asserted several of these patents before (see previous posts, e.g., here and here).


Smart Grid

Endeavor MeshTech, Inc. v. Synapse Wireless, Inc.

Endeavor MeshTech, Inc. v. Tantalus Systems, Inc.

On March 25, 2015, Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) filed two more patent infringement complaints.  One was filed against Synapse Wireless in the U.S. District Court for the Northern District of Alabama (Endeavor v. Synapse), and the other against Tantalus Systems in the Eastern District of North Carolina (Endeavor v. Tantalus).

The complaints accuse each defendant of infringing three patents in a family – U.S. Patent Nos. 7,379,981,  8,700,749, and 8,855,019, each entitled “Wireless communication enabled meter and network.”  The patents-in-suit relate to a self-configuring wireless network including a number of vnodes and VGATES.

The accused products are systems, modules, devices, and services under Tantalus’s TUNet brand and Synapse’s SNAP brand.


Sunrise Technologies, Inc. v. Cimcon Lighting, Inc.

Sunrise Technologies, Inc. v. Selc Ireland Ltd.

On April 8, 2015, a Massachusetts company called Sunrise Technologies filed suit against two competitors (Sunrise v. Cimcon; Sunrise v. Selc) in the U.S. District Court for the District of Massachusetts.  The complaint asserts U.S. Patent No. 7,825, 793, entitled “Remote monitoring and control system” (‘793 Patent).

The ‘793 Patent is directed to a communication system that communicates information between an end user device and a remote end user via a communication node mounted on the upper part of a utility pole.  The communication node is capable of communicating with a nearby user device using a low-power communication protocol such as the Zigbee protocol and transmits the communication to the end user via a neighborhood mesh network of nodes mounted on utility poles.

The accused products are Cimcon’s iSLC’s line of intelligent wireless controllers and Selc’s Wireless Central Monitoring Systems.


Intuitive Building Controls, Inc. v. Control4 Corporation

Intuitive Building Controls, Inc. v. Acuity Brands, Inc.

Intuitive Building Controls, Inc. v. AMX LLC

Intuitive Building Controls, Inc. v. Crestron Electronics, Inc.

Intuitive Building Controls, Inc. v. United Technologies Corporation et al.

Texas-baseed Intuitive Building Controls (IBC) fired off five complaints asserting infringement of one or more of three patents relating to lighting control systems.  The lawsuits were all filed in federal court in Marshall, Texas on April 14, 2015.

The patents-in-suit are U.S. Patent Nos. 6,118,230, entitled “Lighting control system including server for receiving and processing lighting control requests”(‘230 Patent), 6,160,359, entitled “Apparatus for communicating with a remote computer to control an assigned lighting load” (‘359 Patent), and 5,945,993, entitled “Pictograph-based method and apparatus for controlling a plurality of lighting loads” (‘993 Patent).

The complaints against Control4 (Intuitive v. Control4), AMX (Intuitive v. AMX), and Crestron (Intuitive v. Crestron) assert all three patents.  The complaints against Acuity Brands (Intuitive v. Acuity) and United Technologies (Intuitive v. United Technologies) list only the ‘230 Patent.

Jury Verdict for Everlight Knocks Out Nichia Patents

May 13th, 2015 by Eric Lane No comments »


A previous post discussed the declaratory judgment complaint (Everlight-Nichia ComplaintEverlight Electronics filed against Nichia in federal court in Michigan in April 2012.

Everlight sought declaratory judgment of non-infringement, invalidity, and unenforceability due to inequitable conduct 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).

Everlight suffered a setback later that year when the court granted Nichia’s motion to dismiss the inequitable conduct claims.

However, the Taiwanese company scored a big victory recently when the Michigan jury unanimously found multiple claims of the ‘925 and ‘960 Patents invalid.  More particularly, claims 2, 3 and 5 of the ‘925 Patent were found to be invalid due to obviousness, claims 2, 14 and 19 of the ‘960 Patent were found to be invalid due to obviousness, and claims 14 and 19 of the ‘960 Patent were also found invalid for lack of enablement.

The jury declined to find claims 2, 3 or 5 of the ‘925 Patent to be invalid on the additional enablement ground.

While this is an important win for Everlight, it is just one battle in a sprawling patent war between these two LED rivals.  The litigation dates back to 2005 when Nichia first targeted Everlight for patent infringement and extends to various venues around the world.

Nichia has sued an Everlight customer in a Tokyo District Court asserting the Japanese counterpart to the ‘960 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).

In addition to this DJ action, Everlight has filed a number of reexaminations proceedings targeting Nichia’s LED patents.

CEPGI Year in Review Shows Green Patents Hit All-time High in 2014

May 6th, 2015 by Eric Lane No comments »

The Clean Energy Patent Growth Index (CEPGI) recently released its 2014 Year in Review.  Researched and published by the Heslin Rothenberg law firm, CEPGI is a quarterly report on clean energy patents issued in the United States.

The big news is that the 3609 green patents granted in 2014 is the highest annual total since CEPGI began tracking green patent trends in 2002.  This is a jump of 434 from 2013.

The largest number of green patents was in solar technology, with 1238 solar patents, a 28 percent increase from the previous year.  Fuel cell patents were in second place, with 1024 (a 27% jump from 2013), followed by wind patents (623), and hybrid/electric vehicle patents (521).  Biofuels patents (230) were in the fifth position.

The top green patentee for 2014 was Toyota, which had 149 patents granted, followed by General Motors, with 126 granted green patents, Samsung (102 patents), Hyundai (101 patents), and Honda (97 patents).  The overall leader in granted green patents since 2002 is still General Motors, followed by Honda, Toyota, GE, and Samsung.

By technology sector, Toyota was the fuel cell patent leader in 2014 with 101 fuel cell patents granted, Samsung was the top solar patentee of the year (37 patents), and Hyundai topped the list for hybrid/electric vehicle patents, with 56.  While GE had been the top wind patentee for eight years running, Vestas came out on top in 2014, with 80 granted wind patents.

In 2014, green patent owners were a diverse group:  according to the report, “over 1500 entities contributed to the record total of Clean Energy patents last year.”

CEPGI also breaks out its data by jurisdiction, looking at the countries and individual U.S. states of green patentees.  The United States was the 2014 leader with 1504 green patents granted.  Japan took second place, with 696 patents, followed by Korea (346), Germany (316), Denmark (120), and Taiwan (118).

California was the leading U.S. state, with 385 patents, followed by Michigan (227), New York (132), and Texas (77), Ohio (56), and Massachusetts (55).

The full report can be found here.

Trade Secrets Lit Updates: Sinovel Challenges Summons Service and Philips Computer Fraud Claim Fails

April 29th, 2015 by Eric Lane No comments »

There are updates on a couple of green tech trade secrets cases, each involving allegations of misappropriation by Chinese companies and their employees.

First, as discussed in a previous post, the ongoing litigation between American Superconductor (AMSC) and Sinovel includes a criminal indictment against the Chinese wind turbine maker, two of its employees, and a former AMSC employee.

The defendants are charged with conspiracy to commit trade secret theft and criminal copyright infringement.  The technology involved is AMSC’s source code, software, equipment designs and technical drawings that relate to regulating the flow of electricity from wind turbines to the electricity grid

In a recent oral argument, Sinovel asked the U.S. Court of Appeals for the Seventh Circuit to reverse a lower court ruling and quash a summons, arguing it was improperly served on its U.S. subsidiary.  An article about the oral argument can be found here.

The second is a lawsuit brought by Koninklijke Philips and Philips Lumileds against Chinese competitor Elec-Tech International (ETI), several ETI subsidiaries, two corporate directors, and a former Lumileds employee named Dr. Gangyi Chen.  Philips alleged theft of trade secrets relating to high-energy LED lighting technology.

Elec-Tech moved to dismiss the complaint for a number of reasons, including an inadequately pleaded claim under the Computer Fraud and Abuse Act (CFAA), the only federal cause of action in the case.

In a recent decision, a federal court in San Jose, California dismissed Philips’ case, holding that the federal law claim under the CFAA could not be sustained.

The CFAA prohibits various computer crimes related to accessing computers without authorization in order to obtain information or data.  The problem for Philips was that Dr. Chen, who was alleged to have stolen the trade secret information, was authorized to access the Philips Lumileds network and did not exceed his authorized access while downloading the information prior to his resignation.

Specifically, the complaint was deficient because it lacked any allegation that someone without authorization accessed the confidential information:

By the Complaint’s own allegations, none of the CFAA Defendants accessed Lumileds’ information – Dr. Chen did, at a time when he was authorized to download this information.

While Dr. Chen may have misappropriated the information (a state law claim) and given it to the CFAA Defendants, the court held there is no “claim against those Defendants under the CFAA because they themselves did not hack Lumileds’ system.”

The court rejected Philips’ argument that Dr. Chen was an “agent” of the CFAA Defendants and they should be held liable based on their indirect, unauthorized access through Dr. Chen’s access, holding that the CFAA Defendants lack of access was fatal to the claim:

None of the CFAA Defendants entered or used Lumileds’ network.  At most, they encouraged Dr. Chen to do so, and stood to benefit from alleged misappropriation.  This action may give rise to a number of claims, but it does not support a theory of liability under the CFAA.

Expect this case to start up again in state court.

CleanTech PatentEdge Annual Report Shows Green Patenting Grew in 2014

April 21st, 2015 by Eric Lane No comments »

Berkeley-based IP Checkups recently published its 2014 Annual Report on cleantech patenting trends.  Based on the firm’s proprietary green patent database –  Cleantech PatentEdge™ – the report contains much interesting analysis driven by this powerful data analytics tool.

The major finding of the report is that, after a year of decline in 2013, worldwide patent activity grew last year, rising consistently in each quarter of 2014.  This is measured by the number of cleantech patent documents published, which typically means a lag time of 18 months from application filing date.

In the United States, the number of published cleantech patent applications grew by 8% from 2013 to 2014, and the number of U.S. patent publications and grants reached a five-year high.

Looking across all cleantech sectors, the report found that U.S. patent activity increased by an average of 13% in 2014, with renewable energy generation being the leading sector.  Within that sector, solar and biofuels showed the most growth.

The report lists the top twenty worldwide cleantech patent assignees.  Samsung, Toyota, and Panasonic topped the list, with General Electric and Mitsubishi rounding out the top five.

The patent assignees are broken out by industry sector, and the report provides other useful information, such as an in-depth look at patenting trends in transportation and analysis of cleantech venture capital funding trends.  Significantly, cleantech VC funding saw a 28% YOY increase from 2013 to 2014.

For more information, visit the Cleantech PatentEdge web site here.

BASF Brings Battery Battle to the Border

April 14th, 2015 by Eric Lane No comments »

A previous post reported that chemical giant BASF and UChicago Argonne LLC (Argonne) sued Belgium-based Umicore and Japan-based Makita Corporation for infringement of two patents relating to cathode materials for lithium-ion batteries.  That lawsuit was filed February 20, 2015 in the U.S. District Court for the District of Delaware.

The same day BASF and Argonne filed a complaint in the U.S. International Trade Commisson (ITC) asking the ITC to investigate whether Umicore, Makita and their U.S. subsidiaries have imported and sold in the United States lithium ion cathode materials and batteries that infringe the same patents.

The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337.  It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

The patents-in-suit are U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent), both entitled “Lithium metal oxide electrodes for lithium cells and batteries” and directed to a lithium metal oxide positive electrode for a non-aqueous lithium cell.

The cell is prepared in its initial discharged state and has a general formula xLiMO2.(1−x)Li2M′Oin which 0<x<1, and where M is one or more ion with an average trivalent oxidation state and with at least one ion being Mn or Ni, and where M′ is one or more ion with an average tetravalent oxidation state.

According to the ITC complaint, Argonne is the owner of the ‘082 and ‘143 patents and BASF produces lithium ion cathode materials under an exclusive license to the patents.

Recently, the ITC issued a Notice announcing that it would investigate BASF’s and Argonne’s claims of infringement.

BASF and Argonne have requested a limited exclusion order that would prevent Umicore and Makita from importing Umicore’s cathode materials, allegedly marketed and sold under the Cellcore product group, and certain Makita power tools using lithium ion batteries.

Although Umicore and Makita are now squeezed in both the ITC and federal court, they may ask the court to stay the parallel court action in view of the ITC investigation.