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

May 22nd, 2014 by Eric Lane No comments »

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

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

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

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

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

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

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

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

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

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

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

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

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

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

CEPGI 2013 Year in Review Shows Small Annual Rise But Record High for Green Patents

May 15th, 2014 by Eric Lane No comments »

 

The Clean Energy Patent Growth Index (CEPGI) recently released its 2013 Year in Review.  Researched and published by the Heslin Rothenberg law firm, CEPGI is a quarterly report on clean energy patents granted in the United States.

CEPGI has been tracking green patent trends by technology sector, assignee, and geography since 2002.

Most years have seen new record highs in granted green patents, and 2013 was no exception, with 3175 clean energy patents granted by the U.S. Patent and Trademark Office.  The year-to-year increase of 114 from 2012, however, was relatively small compared to the annual jumps in the last several years.

The leading sector in 2013 was Solar, with 965 patents granted, followed by 886 Fuel Cell patents, with Wind patents in third place.  This was the first year Solar surpassed Fuel Cell patents, which dropped from its high of 1024 patents awarded in 2012.

Hybrid/Electric Vehicle patents jumped 123 from 2012 to 409 patents granted in 2013 to take the fourth place position, and Biomass/Biofuel patents were in fifth place, up 47 patents from the prior year to 226.

The largest annual percentage growth was in Geothermal patents, with a 50% increase (from 14 to 21 patents), and Hybrid/Electric Vehicle patents saw a 43 percent increase.  Tidal/Wave energy patents rose 34 percent, Biomass/Biofuel patents grew by 26 percent, and Solar patents were up 12 percent.

The top patent owners for 2013 were GM, with 169 patents, followed by Toyota (158 patents), Samsung (103 patents), and GE and Honda, both with 89 patents.  Rounding out the top ten were Mitsubishi, Hyundai, Ford, Vestas, and Siemens.

CEPGI’s Year in Review breaks out the leading patent owners by sector as well.  The leader in Fuel Cell patents was GM, with 128, Toyota took second place with 110, and Samsung was in third place (69 patents).

GE led in Wind, with 66 patents in 2013.  Mitsubishi was a fairly close second, with 54 patents, followed closely by Vestas (47 patents) and Siemens (41 patents).  In 2013, the Solar patent field in was led by Samsung (31 patents) and SunPower (28 patents).

An interesting statistic is the large annual increase in the number of U.S. green patentees:

Looking only at 2013 . . . , around 1500 entities contributed to the record total of Clean Energy patents in 2013, which is hundreds more patent grantees than 2012.

This indicates that the universe of green patentees (read:  green tech innovators) is rapidly growing and diversifying.

According to CEPGI, this effect is most pronounced in the Solar sector (“[o]ver 600 different entities were granted Solar patents in 2013″).  In both Fuel Cells and Wind, by comparison, there were about 300 different entities granted patents in 2013.

The full report can be read and downloaded here.

 

As FTC Revises Rules for Fuel Economy Ads Green Guides Can Guide

May 8th, 2014 by Eric Lane No comments »

A piece published this week on Green Car Reports starts this way:

No one wants to buy a brand-new car, only to find out that its real-world fuel economy doesn’t match the numbers on the window sticker.

It struck me that this statement describes the plaintiffs in a number of greenwashing lawsuits filed (and covered in this space) over the last several years.  The suits against Ford, Hyundai and KiaToyota, and Honda are notable examples where the actual miles-per-gallon allegedly did not match the sticker and/or the advertising.

Turns out the Federal Trade Commission will be  revising its fuel-economy advertising guidelines and is seeking comments relating to ”information that helps marketers avoid deceptive or unfair claims,” among other things. Entitled the “Guide Concerning Fuel Economy Advertising for New Automobiles,” the guidelines were first issued in 1975.

One specific issue the FTC will consider is whether marketing material that makes a ”general fuel economy” claim should include a specific mile-per-gallon figure.  Another question is whether an ad that specifies the fuel-economy rating in one EPA category or lists a specific mpg rating without specifying the category is deceptive.

For anyone familiar with the FTC’s Green Guides, these questions will be very familiar.  The Guides for the Use of Environmental Marketing Claims were first published by the FTC in 1992 and have undergone at least three revisions, most recently in 2012.

The Green Guides states that claims of general environmental benefits are deceptive:

It is deceptive to misrepresent, directly or by implication, that a product, package or service offers a general environmental benefit.

Why?  Because, the guides explain:

Unqualified general environmental benefit claims are difficult to interpret and likely to convey a wide range of meanings.  In many cases, such claims likely convey that the product, package, or service has specific and far-reaching environmental benefits and may convey that the item or service has no negative environmental impact.  Because it is highly unlikely that marketers can substantiate all reasonable interpretations of these claims, marketers should not make unqualified general environmental benefit claims.

It would be logical, I think, to extend this rule and its rationale to general fuel economy claims.  Fuel economy ratings fall into different categories.  They can be broken down into city and highway driving, for example, and many factors, such as how the car is tested, can determine the results.

Also, the Green Guides provide that marketing statements about recycling, for example, must specify exactly what percentage and which element of the product (the product itself, the packaging, or both) is recyclable or made from recycled material.

This required granularity should lend itself to rules that marketing statements about fuel economy benefits need to specify, among other things, the EPA category being touted.

Of course it was inevitable that regulators in particular fields would contemplate promulgating or revising their rules to take into account deceptive environmental marketing claims.  They are fortunate to have the Green Guides to guide them.

 

 

Global Green Patent Filings Fell in 2013: CleanTech PatentEdge Annual Report

April 29th, 2014 by Eric Lane No comments »

Berkeley-based IP Checkups recently published its 2013_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 several years of growth, worldwide published cleantech patent filings declined in 2013.  This is measured by the number of cleantech patent documents published, which typically means a lag time of 18 months from application filing date for published patent applications, and may reflect the decrease in cleantech venture capital funding in 2013.

More particularly, the number of worldwide patent documents published in 2013 decreased by 6% from 2012.

Against this global backdrop, the share of U.S. patent grants grew over the last several years from 16% of the worldwide total in 2009 to 22% last year.  Interestingly, the share of U.S. published patent applications has remained fairly steady over this period, comprising about 1/3 of worldwide cleantech patent publications.

The report also looks at green patent documents by industry sector and found that Renewable Energy Generation is the leading sector with 23% of the patent documents.  This lead is attributable to growth in solar and biofuels patents, according to the report.

Other sectors that have seen growth in the past several years are Transportation, Green Materials, Energy Storage, and Efficiency.

You can read the complete report here.

Guest Post: New Patent on Investment Vehicle Could Impact Renewable Project Developers

April 22nd, 2014 by Philip Totaro* No comments »

A recently issued patent could make the use of master limited partnerships (MLPs) more difficult in wind projects without a license or reliance on the patent owner to provide software / services to enable transactions.

Entitled “Apparatus and method for combining easements under a master limited partnership,” U.S. Patent No. 8,700,517 (’517 Patent) describes a master limited partnership as follows:

A master limited partnership (MLP) is a business organization governed by a contract between management (e.g., general partners) and investors (e.g., limited partners). A master limited partnership combines the tax benefits of a limited partnership with the liquidity of publicly traded securities. The master limited partnership was originally conceived as an organizational structure to capitalize on mature, low growth, cash generating businesses. Accordingly, master limited partnerships have been used in such industries as oil, gas, real estate, and natural resources.

Presently, this type of investment vehicle is being deliberated by the U.S. Congress as a mechanism to help facilitate the deployment of renewables.  The implication would be that a broader base of potential investors that do not require accreditation could become partners / investors in wind farms or solar parks.

We have seen recent trends towards crowd-funding of wind parks in Europe, and some developers here in the U.S. believe MLPs could be a useful tool.

The ’517 Patent describes a business method for using a computer system to store data and information related to property easements secured under the MLP structure:

A computer includes a processor and a memory connected to the processor. The memory stores capital data characterizing capital raised for the purchase of real property easements, operating data characterizing fees collected in connection with the real property easements, and a master limited partnership module with executable instructions executed by the processor to designate master limited partnership income based upon the capital data, the operating data and terms of an easement ma[s]ter limited partnership.

An easement is a property right under common law, and is often sought by a renewable project developer from a landowner so that valuable consideration is provided to the landowner for the use of the property for renewable project construction.

An examination of the breadth of claim 1 of the ’517 Patent shows that the inventors propose a computer system and a means for cataloging and storing information related to easements of specific projects with an MLP structure:

1.  A computer, comprising: a processor; and a memory connected to the processor, the memory storing capital data characterizing capital raised for the purchase of real property easements, operating data characterizing fees collected in connection with the real property easements, wherein the fees are from aggregated real property easement rights and associated rental fees from rent generating fixtures, and a master limited partnership module with executable instructions executed by the processor to designate master limited partnership income based upon the capital data, the operating data and terms of an easement ma[s]ter limited partnership.

The implications of this claim breadth would be to make the assignee of the ’517 Patent, American Infrastructure Funds, LLC, the owner of a de-facto standard for many MLP deal structures, even outside of renewables.

The ’517 Patent might be treated similarly to a “standards essential” patent, and compulsory licensing may be required since it would appear that many investment management companies and project developers would utilize computer systems and software which comprise this method.

Interestingly, while many companies may propose to argue against the obviousness of something so broad, the method described would have likely been treated by investment companies and project developers in the past as a company trade secret.  Thus, there may be little public domain disclosure of relevant prior art to this method, and their original priority claim from the patent family dates back over 12 years.

It will be interesting to see how enforcement of the ’517 Patent unfolds as renewable projects attempt to get on the MLP bandwagon.

 

*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.

Danisco DJ Revived; Pre-Issuance Conduct Counts in “War Over Patents”

April 15th, 2014 by Eric Lane No comments »

previous post discussed the dismissal of Danisco‘s declaratory judgment action against its rival Novozymes.  As described by the San Francisco district court decision, the Danish companies are “reputedly the two major competitors in the field of developing and supplying industrial enzymes used in the process of converting corn into ethanol fuel.”

Danisco’s lawsuit sought a judgment that the company’s Rapid Starch Liquefaction (RSL) alpha-amylase products did not infringe Novozymes’s U.S. Patent No. 8,252,573 (’573 Patent) and that the ’573 Patent is invalid.

The ’573 Patent  is entitled “Alpha-amylase variant with altered properties” and is directed to an isolated variant polypeptide having alpha amylase activity and containing a proline substitution at position 188 (to yield a variant called “E188P”).

In the alternative, Danisco asked the court for a determination that its own U.S. Patent No. 8,084,240 (’240 Patent) has priority over the ’573 Patent.  The ’240 Patent is entitled “Geobacillus stearothermophilus alpha-amylase (AMYS) variants with improved properties” and directed to an isolated variant of a truncated Geobacillus stearothermophilus enzyme also containing the proline substitution at position 188.

Novozymes had added the position 188 proline substitution to a claim late in prosecution of the application that issued as the ’573 Patent after learning that Danisco’s ’240 Patent would be granted with such a claim.

Although the district court conceded that the circumstances might reasonably suggest that Novozymes wanted to enforce the ’573 Patent against Danisco at some point, it held that events occurring prior to patent grant alone cannot support declaratory judgment jurisdiction.

Danisco appealed the district court decision dismissing the case, and the Court of Appeals for the Federal Circuit recently reversed the lower court, holding there was an actual controversy and that the DJ action could be sustained.

The appeals court made clear that the distinction between a patentee’s activities before and after a patent issues is not significant to a DJ analysis that is supposed to be flexible:

The district court’s categorical distinction between pre- and post-issuance conduct is . . . irreconcilable with the Supreme Court’s insistence on applying a flexible totality of circumstances test, its rejection of technical bright line rules, and our own precedent.  Contrary to the district court’s stated view, we have never held that “pre-issuance conduct” cannot constitute an affirmative act . . .

The Federal Circuit found “the record demonstrates that a definite and concrete patent dispute exists” between the parties, based on Novozymes’s actions and statements about the Danisco enzyme product before and after its ’573 Patent issued:

Novozymes has insisted on multiple occasions that its ’573 patent claim reads on the BSG alpha-amylase with an E188P mutation, which is the active compound in Danisco’s RSL products and is claimed in Novozymes’s patent.  The record shows that Novozymes sought its patent because it believed that Danisco’s products would infringe once the claim issued.

Significantly, the court of appeals observed that the parties have clearly staked out opposing legal positions on the patent rights at issue:

Novozymes twice asserted that Danisco’s ’240 patent was invalid and that Novozymes, not Danisco, is entitled to a patent on the claimed BSG E188P alpha-amylase invention.  Danisco has taken a legal position that is entirely opposed to the position taken by Novozymes, viz., that Danisco successfully prosecuted and obtained the ’240 patent, that it is the rightful owner of the claimed invention, and that its RSL products do not infringe the claim of Novozymes’s ’573 patent.

In light of all the circumstances, including previous litigation and Novozymes’ conduct prior to issuance of the ’573 Patent, the Federal Circuit held that there is declaratory judgment jurisdiction here:

Novozymes has twice sued Danisco or its predecessors in interest for patent infringement regarding related liquefaction products.  The parties have plainly been at war over patents involving genetically modified alpha-amylase enzymes and are likely to be for the foreseeable future.  They thus have adverse legal interests over a dispute of sufficient reality that is capable of conclusive resolution through a declaratory judgment.

San Diego Clean Tech Open Biz Briefing to Highlight Eco-marks and Green Patent Perspectives

April 7th, 2014 by Eric Lane No comments »

If you’re in or around San Diego this week be sure to check out the Clean Tech Open Business Briefing this Thursday, April 10th.

The Cleantech Open is a non-profit organization that runs the world’s largest cleantech accelerator.  The Business Accelerator fosters promising startups in cleantech fields through a six-month program that includes cutting-edge entrepreneur training and mentoring (including in IP!), client and partner opportunities, and funding connections.

The business briefings bring together Clean Tech Open members and staff and early-stage clean tech start-ups and entrepreneurs.  Attendees will get an overview of the Cleantech Open and the Business Accelerator.

I will be speaking on some broad themes about the role of patents in the clean tech industry.  Entitled “Green Patents and Green Branding:  Global Perspectives and News You Can Use,” my talk will cover a range of big picture stuff and practical info on green patenting and protecting eco-marks.

The event will be held at the World Resources SimCenter in downtown San Diego from 6:00-8:00 PM.  You can find more information about the event and register here.

In Legal Industry First, GLA McKenzie Long & Hugeo Opens Antarctica Office

April 1st, 2014 by Eric Lane No comments »

GLA McKenzie Long & Hugeo announced today the opening of an Antarctica office.  The new office is the firm’s 683rd location, following yesterday’s opening of an outpost in the Kufra basin and oasis group in the Sahara desert.  GLA is the first law firm to open an office in Antarctica.

Located in the prestigious Coats Land region of East Antarctica, the office will provide the firm’s clients and staff with easy access to the Shackleton Range, the Filchner Ice Shelf, and of course, the South Pole.

The office will be headed by Winchell Cooke, a partner in the firm’s Environmental Law practice group who will relocate from Nuuk, Greenland.   Cooke, who billed 198 hours in 2013 and has $207,412.51 in A/R from the last two years, could not be reached for comment.

“We are extremely pleased to be the first international law firm to open an office in Antarctica,” said GLA Managing Partner Thaddeus “Chip” Buckley.  ”Our Antarctica practice has grown substantially over the past few weeks, particularly in the areas of environmental law, climate change, maritime law, and dogsled expedition law, and having GLA lawyers in Coats Land will allow us to more efficiently and effectively serve both our locally based clients and our international clients doing business in Antarctica.”

“Our firm offers its clients unparalleled global reach,” he added.

GLA has had a vibrant polar practice for more than two weeks.  With at least three lawyers who do cross-country skiing (including one associate also adept at snow-shoeing), the firm offers a talented and deep team of ice-ready attorneys.

 

“Unparalleled Global Reach”

This is likely to be just the first step for GLA in Antarctica, the fifth-largest continent in area after Asia, Africa, North America, and South America.  Buckley said the firm is looking to add another office in West Antarctica very soon, and is scouting locations in Palmer Land along the Antarctic Peninsula.

Don’t rule out the North Pole either, Buckley said.  The combination would fit well with the firm’s culture because many GLA lawyers exhibit behavior that is “clinically bipolar.”

GLA Managing Partner Chip Buckley and members of the firm’s Strategic Growth Committee visit potential office space in East Antarctica.

GLA is the world’s largest law firm, with over 80,000 lawyers worldwide, and has gone on an explosive growth spree in the last few years, acquiring more than 450 smaller firms.

We caught up with Buckley as he concluded a conference call with GLA’s 692 practice group chairs.  He told Green Patent Blog that the recent expansion by GLA highlights a major advantage of the firm:  its “unparalleled global reach.”  According to Buckley, that has been very attractive to clients as GLA has been able to maintain and add thousands of clients during its recent period of rampant acquisitions.

 

“A Dizzying Array of Options for Getting Around Conflicts”

While mergers and acquisitions often create conflict problems that lead to lost clients and missed engagement opportunities for global law firms, Buckley said GLA has been able to avoid those issues.  The solution for GLA has been to organize the firm under an innovative Bulgarian corporate structure called a Melaeighn (pronounced “malign”).  With 19 offices in Bulgaria, GLA has the legal right to operate as a domestic Melaeighn.

Advantageously for GLA, a Melaeighn allows all of the firm’s offices to be governed by Bulgarian legal ethics rules.  While those rules allow lawyers substantial flexibility in resolving conflicts between and among client matters handled by different offices, the key advantage, according to Buckley, is that the Bulgarian legal ethics rules have a liberal choice of law provision that allows the law firm to operate pursuant to the most lax legal conflict rule of all the jurisdictions the firm is operating in.

“With nearly 700 offices in over 180 jurisdictions, our attorneys have a dizzying array of options for getting around conflicts.  We basically have license to do anything we want in terms of representing adverse parties, even in concurrent litigation and transactions.”  Buckley said.

“It’s like Christmas every day!” said a partner in the firm’s highly lucrative Intellectual Property department who did not wish to be named.

While the flexibility in avoiding conflict issues is a boon for GLA lawyers, some legal industry analysts questioned whether clients might be displeased with the prospect of their counsel suing them on behalf of their direct competitors.

Buckley brushed off the concern.  ”We’re confident that current and prospective clients will conclude that the advantage of being represented by the largest and most prestigious law firm in the world outweighs any potential loyalty issues.”  He added that GLA has “unparalleled global reach.”

 

“Informed Consent Through Our LAWDICK”

“Besides,” Buckley said, “we provide full disclosure and always obtain informed consent through our legitimate advance waiver of disloyalty-induced conflict contract (LAWDICK) provision, which I ordered to be inserted into all of our engagement letters.  The LAWDICK is a neat little trick we picked up from the legal conflict rules in Zimbabwe,” where GLA has nine offices.

Standard in GLA engagement letters, the LAWDICK requires a client to waive any conflicts that would arise by the firm taking engagements adverse to the client and applies both retroactively and prospectively.

Buckley was coy about the language of the LAWDICK provision, but Green Patent Blog was able to obtain a copy of the firm’s standard engagement letter from an unnamed source.  (Literally.  For administrative efficiency, GLA has stripped its associates of names and identities in favor of an internal numbering system.  The engagement letter was provided to us by Associate No. 52,961).

An excerpt of GLA’s cutting edge LAWDICK is reproduced below:

GLA McKenzie Long & Hugeo is a law firm of tens of thousands of lawyers and non-lawyer professionals in over 180 jurisdictions around the world and is involved in all kinds of business dealings, negotiations, and disputes with other clients of the firm.  In consideration of GLA’s acceptance of this engagement, the Client agrees that GLA may, in the past, present, or future, and throughout all time, anywhere in the Universe, represent existing or new clients in any matter relating to the Client, including, without limitation, litigation against the Client, negotiations directly or indirectly adverse to the Client or the Client’s interests, even if substantially related to this representation or any other matters GLA has had, currently has, or will have with the Client.  The Client further agrees that GLA may represent direct competitors of the client in matters directly or indirectly adverse to the Client or the Client’s interests and/or may represent employees, officers, affiliates or subsidiaries of the Client in matters directly or indirectly adverse to the Client.  The Client waives any and all rights to object to any such matter as described above.  This waiver notwithstanding, the Client agrees that GLA is completely and utterly loyal to the Client and will always act as a zealous advocate for the Client (unless of course another engagement comes along that could generate higher fees for GLA than those generated by working on matters for the Client).  Any questioning of GLA’s loyalty to the Client by the Client will be deemed a material breach of this agreement and will be grounds for termination of this agreement.

In any event, it seems clear that GLA will continue to grow and will be the largest international law firm for a long time to come.  Buckley told us that he is committed to exponential growth as he emphasized the firm’s “unparalleled global reach.”

He views the expansion as a major part of his legacy as managing partner.  ”That, and the firm LAWDICK inserted at my insistence.”

Even with 682 other locations, Buckley said he is particularly proud of the new Antarctica office and summed up its significance for the firm:

“These days there may be other international law firms that can say the sun never sets on their offices, but GLA is the only firm that can say the ice never melts on our offices.”

“Plus,” he added, “GLA provides unparalleled global reach.”

Who Owns All the Smart Grid Patents? New Study Reveals Answer

March 25th, 2014 by Eric Lane No comments »

Ever wonder who owns all the smart grid patents?  With all of the acquisitions in smart grid (see, e.g., here and here), it seems a lot of folks have been considering the question.

A recent study by patent analytics firm Relecura on smart grid patent holders seeks to answer this question.  It turns out the top five are ABB, GE, Panasonic, Siemens, and Toshiba:

The study breaks out the results by six sub-technology categories (communications, software, smart meters, sensors, substation automation, and distribution automation) and lists the top large entities and SMEs in each subcategory:

The full report, which can be found here, styles itself a “preliminary survey of the Smart Grid assignee landscape and first-cut identification of patent asset holders in Smart Grid technology.”

According to Relecura, the purpose of the study is to identify potential licensees and acquisitions targets for each of the sub-technologies.  The study uses 2008 as a reference year, and defines its Potential Licensees and Potential Acquisitions Targets relative to that year.

More particularly, Potential Licensees are entities whose patent applications were filed in 2008 or later while Potential Acquisitions Targets are typically small or medium sized entities with granted patents from applications filed in 2008 or earlier.  In other words, small companies and SMEs with relatively mature patent portfolios are deemed more ripe for acquisition and those with younger patent portfolios are thought to be more amenable to licensing IP.

With so much activity in smart grid M&A, this report could be useful to a lot of people.

Butamax Wins on Appeal as Federal Circuit Reverses Enzyme Claim Construction

March 18th, 2014 by Eric Lane No comments »

There’s been another big twist in the biobutanol battle between BP-DuPont joint venture Butamax and Gevo, its arch rival in advanced biofuels.

A previous post discussed the district court’s ruling granting Gevo’s motion for summary judgment of non-infringement under the doctrine of equivalents of two Butamax patents - U.S. Patent Nos. 7,993,889 (’889 Patent) and  7,851,188 (’188 Patent).  The district also denied both parties’ motions on literal infringement and reached split decisions on validity of the patents.

Butamax appealed, and the Court of Appeals for the Federal Circuit recently vacated both the grant of Gevo’s motion for summary judgement of non-infringement and the denial of Butamax’s motion for summary judgment.

The ’889 and ’188 Patents are both entitled “Fermentive production of four carbon alcohols” and directed to a more cost efficient method of producing isobutanol directly from pyruvate via a particular production pathway using recombinant microbial host cells.

The patented processes use an enzyme called KARI, which needs a cofactor that donates electrons to enable it to catalyze a reaction.  Based on statements in the patents, the district court had interpreted the claims to require a KARI defined with respect to the NADPH cofactor only.

The crux of the Federal’s Circuit’s decision was its holding that the district court erred in its claim construction, specifically concluding that the lower court got it wrong when it interpreted the claim term “acetohydroxy acid isomeroreductase”, i.e., KARI, to mean an enzyme that is solely NADPH dependent.

The Federal Circuit found that the plain meaning of the term KARI does not in itself impose any limitation on the cofactor or the source of electrons needed for the reaction.

In addition, the appeals court found that nothing in the patents limited the definition of KARI to being only NADPH dependent:

The patent’s definition at least excludes as-yet-undiscovered KARI enzymes that could catalyze conversion of AL to DHIV without using NADPH at all.  Moreover, the description of specific types of KARI as NADPH-dependent does not clearly express an intent to redefine all KARI “using NADPH” as KARI that must be NADPH-dependent.

Ultimately, the Federal Circuit made its own determination on claim construction, defining “acetohydroxy acid isomeroreductase” by its enzyme classification number and catalytic activity:

[T]he term “acetohydroxy acid reductisomerase” is construed as “an enzyme, whether naturally occurring or otherwise, known by the EC number 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate.”

Therefore, the appeals court vacated the denial of Butamax’s motion for summary judgment of infringement because the lower court now has to consider the question of whether Gevo’s enzymes infringe the patents-in-suit under the broader claim construction.

Interestingly, this case previously went up to the Federal Circuit on appeal of a preliminary injunction decision, and the appeals court at the time warned the district court to reconsider its claim construction of the disputed term.

As to validity of the Butamax patents, the Federal Circuit reviewed the record and found sufficient evidence – in the form of expert testimony and scientific publications – to create a genuine issue of fact that the ’889 Patent meets the written description requirement because those of skill in the art know how to deactivate the genes that express the claimed pathway.

So the case will go back down to the district court for another round on infringement and validity.