Should the USPTO Delay Publication of Trademark Applications? (Part 1)

March 1st, 2017 by Eric Lane No comments »

A while back, I published a couple of posts (here and here) about Chevrolet’s trademark applications for BOLT and CHEVROLET BOLT (Application Nos. 86357513 and 86357523).  The automaker had previously filed trademark applications for the same marks in Brazil, and the U.S. applications claimed priority to the Brazilian ones.

At the time, there was much speculation in the blogosphere about Chevy’s intentions:  was the company really planning a new vehicle called the BOLT or was it trying to preclude others from using the name?

Given that question, my posts focused on the use requirement for registration of most U.S. trademarks and explained that, for a U.S. trademark application claiming priority to an application filed in another country, the applicant can obtain a U.S. registration based on registration of the priority application in that country.

This is an exception to the general rule that the applicant must use the mark in the U.S. for the goods and/or services listed in the application to get a registration and must prove such use by submitting a specimen showing such use.

So filing a U.S. trademark application based on a foreign or international registration gets around the use requirement (in the United States and potentially anywhere in the world), at least for the purpose of obtaining a U.S. trademark registration.  I concluded, therefore, that perhaps Chevy’s motivation was to skirt the use requirement in the United States.

That explanation probably was wrong because, as it turned out, Chevy did unveil a concept car call the BOLT at the Detroit Auto Show in January 2015 and indicated it would start production in 2017.

Nevertheless, that might have been the end of the matter for me if I hadn’t caught another notable news item from around the same time about the intricacies of trademark filing.

As reported by the Wall Street Journal’s law blog and the Trinidad Express, among others, before filing its U.S. trademark application for APPLE WATCH Apple filed an application for the mark in the Caribbean twin island nation of Trinidad and Tobago.

As technology reporters, bloggers, and consumers wondered what Apple would call its new smartwatch, the company had already taken the critical step in securing its trademark rights to the name several months before launching the product.  And it did so way off the radar so as to keep it under wraps.

This is because, unlike patent applications, U.S. trademark applications are immediately publicly available after filing (it may take a day or two for processing, but there is no publication delay in the system).

So while those tech observers certainly thought to search the U.S. trademark application records to glean Apple’s branding intentions, it would have occurred to no one to attempt a review of Trinidad and Tobago trademark filings.

Within six months, Apple filed at least one U.S. application for APPLE WATCH claiming priority to the Trinidad and Tobago application (Application No 86389945).

Since the Chevrolet Bolt posts and the Apple Watch news, my mind has drifted back these trademark filing curiosities many times.

For some reason, they bother me, and I find myself posing this question:  why should a U.S. trademark applicant that wants to take that crucial first step of securing its rights with a trademark filing while maintaining control of a new brand launch have to file an application in an intellectual property office in some obscure corner of the planet?

My idea, which has been percolating for a while, is this:  perhaps there should be a delay in initial publication of new trademark applications, a brief “blackout” period to maintain applicants’ confidentiality.  I’ll explain this proposal in detail in Part 2 of this post.

Battery Conference to Offer a Full Day Battery IP Workshop

February 22nd, 2017 by Eric Lane No comments »

The 2017 National Battery (“NAAtBatt”) Annual Meeting and Conference, being held March 14-16 in Litchfield Park, Arizona, will include a full day session (“the first workshop its kind”) devoted to IP issues in advanced batteries.

The Workshop on Intellectual Property Issues in Advanced Battery Technology will cover several topics, including establishing an IP culture at advanced battery companies, patent prosecution in energy storage, licensing battery IP, patent pools and aggregators, advanced battery patent litigation, and big data in advanced battery IP.

The panelists include IP professionals from advanced battery technology companies as well as representatives from the U.S. Department of Energy Office of Technology Transfer, ARPA-E, several national laboratories, the U.S. Patent and Trademark Office, and the European Patent Office.

The workshop web page notes that “[t]he advanced battery industry relies heavily on intellectual property rights” and:

The ability of innovators to protect and monetize their discoveries through intellectual property rights is essential for moving innovations from the laboratory into commerce.

The workshop will run for one day, Tuesday, March 14, concurrently with the first half day of the NAATBatt conference.  CLE credit is available for attorneys.

Attendees may register for the workshop only or for the entire conference.  Registration information can be found here.

Clean Tech in Court: Green Patent Complaint Update

February 13th, 2017 by Eric Lane No comments »

LED technology continues to dominate green patent litigation, with at least 18 new lawsuits filed in November and December of 2016.  Solar mounting systems and waste management each saw one new lawsuit during this period.



OptoLum, Inc. v. Cree, Inc.

Filed November 3, 2016 in federal court in Phoenix, Arizona, OptoLum’s complaint asserts three patents against Cree.

The patents-in-suit are U.S. Patent Nos. 6,573,536, 6,831,303 and 7,242,028, each entitled “Light emitting diode light source.”  They relate to early (their priority date is May 2002) LED technology designed to provide sufficient light output to be used as a general lighting source rather than a signaling source.

The patents are directed to LEDs that emit white light.  The diodes are mounted on an elongate member which is thermally conductive and is utilized to cool the diodes.

The accused products are Cree LED bulbs from 2013 and 2014 that are replacements for 60W and 100W incandescents.

Analog Integrations Corporation v. MagnaChip Semiconductor Corporation

In this lawsuit, Analog Integrations sued MagnaChip for alleged infringement of U.S. Patent No. 8,339,049, entitled “LED driving circuit having a large operational range in voltage” (‘049 Patent).

The ‘049 Patent is directed to an LED driving circuit including a current selecting circuit that controls the current transmission path in a plurality of LEDs according to respective threshold voltages of corresponding LEDs and a plurality of current limits.

Filed November 6, 2016 in U.S. District Court for the Southern District of New York, the complaint accuses MagnaChip’s driving circuit Product Model No. MAP9000 of infringing the ‘049 Patent.

The Regents of the University of California v. Zlight Technology LLC

The University of California has sued Zlight Technology in a case involving transparent LED technology to enable LED filament-style light bulbs.

UC alleges infringement of U.S. Patent No. 7,781,789, entitled “Transparent mirrorless light emitting diode” (‘789 Patent).

The ‘789 Patent is directed to an (Al, Ga, In)N LED in which multi-directional light can be extracted from one or more surfaces of the LED before entering a shaped optical element and subsequently being extracted to air.  The optical element is molded into a sphere or inverted cone shape, wherein most of the light entering the inverted cone shape lies within a critical angle and is extracted.

The invention also minimizes internal reflections within the LED by eliminating mirrors and/or mirrored surfaces, in order to minimize re-absorption of the LED’s light by the emitting layer (or the active layer) of the LED.

Filed November 7, 2016 in U.S. District Court for the Central District of California, the complaint lists a host of Zlight LED filament products alleged to infringe the ‘789 Patent.

Cree, Inc. v. E. Mishan & Sons, Inc.

Cree, Inc. v. Maxbrite LED Lighting Technology, LLC

Cree has asserted five utility patents and one design patent against E. Mishan & Sons in a lawsuit filed November 11, 2016 in U.S. District Court for the District of Massachusetts.

The patents-in-suit are:

U.S. Patent No. 7,808,013, entitled “Integrated heat spreaders for light emitting devices (LEDs)

U.S. Patent No. 7,858,998, entitled “Semiconductor light emitting devices including flexible silicone film having a lens therein

U.S. Patent No. 8,167,463, entitled “Power surface mount light emitting die package”

U.S. Patent No. 8,622,582, entitled “Power surface mount light emitting die package”

U.S. Patent No. 9,070,850, entitled “Light emitting diode package and method for fabricating same”

U.S. Patent No. D615,504, entitled “Emitter package”

The accused products include flashlights such as the TACLIGHT tactical flashlight product.

The lawsuit against Maxbrite was filed November 18, 2016 in federal court in Oakland, California for both patent and trademark infringement.  For some reason, I haven’t been able to track down the complaint, but it appears to be, at least in part, a counterfeiting case (see LED Inside article here).

Tseng v. BBC International LLC et al.

On December 25, 2016, Shen Ko Tseng, an individual, filed this complaint in federal court in San Francisco against BBC International, Concept Technology, and Terry Electronics alleging infringement of an LED circuit patent.

The asserted patents are U.S. Patent Nos. 7,452,106, and 7,405,674, each entitled “Circuit device for controlling a plurality of light-emitting devices in a sequence” and directed to a circuit device for controlling light-emitting devices disposed in a sequence including a motion activated switch.  The controller is capable of driving the light-emitting diodes lighting up on the basis of a first predefined sequence and a consequent second predefined sequence when triggered by a motion-actuated switch.

The accused products are Batman, Thomas, Peanuts, and Spiderman branded LED illuminated shoes.


Blackbird Tech LLC v. Feit Electrical Company, Inc.

Blackbird Tech LLC v. Home Depot U.S.A., Inc.

Blackbird Tech LLC v. Hyperikon, Inc.

Blackbird Tech LLC v. Sunco Lighting, Inc.

Blackbird Tech LLC v. Letianlighting, Inc.

Blackbird Tech LLC v. Halco Lighting Technologies, LLC

Blackbird Tech LLC v. CleanLife Energy LLC

Blackbird Tech LLC v. Evergreen LED, LLC

Blackbird Tech initiated several new lawsuits in the last two months of the year.  The first, against Letianlighting, was filed November 9, 2016 in U.S. District Court for the District of Delaware.

The complaint asserts U.S. Patent No. 7,086,747, entitled “Low-voltage apparatus for satisfying after-hours light requirements, emergency light requirements, and low light requirements” (‘747 Patent).

The ‘747 Patent is directed to an energy efficient lighting apparatus wherein the circuit board is positioned adjacent the ballast cover so that the plurality of light-emitting diodes protrude through the plurality of ballast cover holes in the ballast cover, the lighting apparatus is coupled to a wall switch, and the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.

The other seven complaints were filed December 8 and December 28, 2016, also in Delaware.  The patent in those suits is U.S. Patent No. 7,114,834 (‘834 Patent).  Entitled “LED lighting apparatus,” the ‘834 Patent is directed to a light comprising a housing, a plurality of LED lights coupled in an array inside of the housing, and a reflective protrusion for reflecting light from the LED lights out of the housing.

The LED array receives a consistent flow of DC current that will not result in the LED lights burning out. To prevent the LED array from burning out there is also a current regulator for controlling a current flowing through this LED array.

The accused product in the Feit complaint (Blackbird Tech LLC v. Feit Electrical Company, Inc.) is the 60 Watt Equivalent Dimmable G25 Bulb; the Home Depot complaint (Blackbird Tech LLC v. Home Depot U.S.A., Inc.) lists the Ecosmart 60W LED Replacement bulbs and the Hampton Bay LED Low Voltage 20W Equivalent Spotlight; the accused product in the Hyperikon complaint (Blackbird Tech LLC v. Hyperikon, Inc.) is the Daylight Glow Par 16 bulb, and the Sunco complaint (Blackbird Tech LLC v. Sunco Lighting, Inc.) lists the 6 Watt Pure Efficiency Spot Light.

The accused products listed in the Evergreen complaint (Blackbird Tech v. Evergreen) are the Yigeda Solid State Lighting Chandelier bulbs.  The Cleanlife Energy complaint (Blackbird Tech v. Cleanlife Energy) lists the CleanLife 7W LED MR16 Spot Light, and the Halco complaint (Blackbird Tech v. Halco Lighting Technologies) lists the Halco Solid State Lighting Chandelier bulbs.


Lighting Science Group Corporation v. Halco Lighting Technologies

Halco was also sued by LSG for allegedly infringing three patents whose commercial embodiment is LSG’s GLIMPSE lighting family of products.

The lawsuit asserts the following three patents: U.S. Patent No. 8,201,968 (‘968 Patent), U.S. Patent No. 8,967,844 (‘844 Patent), and U.S. Patent No. 8,672,518 (‘518 Patent).

Entitled “Low profile light,” the ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.  The ‘518 Patent and the’ 844 Patent are entitled “Low profile light and accessory kit for the same” and relate to LSG’s disc light LED devices.

The complaint was filed in federal court in Orlando, Florida on December 21, 2016.


Nichia Corporation v. Feit Electric Company, Inc.

Nichia Corporation v. Lowe’s Home Centers, LLC et al.

Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al.

Nichia Corporation v. Vizio, Inc.

Nichia filed four lawsuits in federal court in Marshall, Texas on December 27, 2016, each asserting U.S. Patent No. 9,490,411 (‘411 Patent) (Nichia Corporation v. Feit Electric Company, Inc.; Nichia Corporation v. Lowe’s Home Centers, LLC et al.Nichia Corporation v. TCL Multimedia Technology Holdings Limited et al.Nichia Corporation v. Vizio, Inc.).

The ‘411 Patent is entitled “Light emitting device, resin package, resin-molded body, and methods for manufacturing light emitting device, resin package and resin-molded body” and directed to an LED manufacturing method in which a resin part and a lead are formed in a substantially same plane in an outer side surface, including sandwiching a lead frame provided with a notch part, transfer-molding a thermosetting resin containing a light reflecting material in a mold to form a resin-molded body in the lead frame, and cutting the resin-molded body and the lead frame along the notch part.

The accused Feit products include the Feit Electric 800 Lumen 3000K Dimmable LED, the LED Shop Light, the Dimmable Warm White LED Bulb, and the 40 W Equivalent Soft White Smart LED Bulb.

The accused Lowe’s products include the Utilitech 75 W Equivalent Par38 Warm White LED Flood Light Bulb, the 65 W Equivalent Dimmable Daylight LED Flood Light Bulb, and the 65 W Eqivalent Dimmable Soft White LED Flood Light Bulb.

The accused TCL and Vizio products are certain LED televisions.


Solar Mounting Systems

Rillito River Solar, LLC v. IronRidge Inc.

Rillito River Solar (dba EcoFastenSolar) sued IronRidge December 1, 2016 in the U.S. District Court for the District of Arizona.

The complaint alleges that IronRidge’s FlashFoot2 roof mounting system infringes U.S. Patent No. 6,526,701 (‘701 Patent).

Entitled “Roof mount,” the ‘701 Patent is directed to a roof mount including a base member, an attachment mount, and a spacer extending the base member to a roof surface. The base member has a protrusion, and the attachment mount defines a hollowed region for receiving the protrusion to form a compression fitting.  A substantially leak proof assembly is formed when the attachment mount is placed against the base member with a sealing material therebetween.


Waste Management

Pannell Manufacturing Corp. v. Smoker et al.

Pannell sued two individuals, Phillips Mushroom Farms, and E&H Conveyors for alleged infringement of three patents relating to mushroom composting.

The patents-in-suit are U.S. Patent Nos. 8,069,608, 8,205,379 and 8,561,344.  They are entitled “Mushroom compost compacting system and method” and are directed to systems and methods for compacting mushroom compost using a roller assembly mounted to a compost receptacle to form a nip, along with a web or conveyor to convey mushroom compost to and through the nip.  Mushroom compost is compacted to a particular height that can be adjusted by the user by adjusting the space between the roller and compost receptacle.

The complaint was filed December 2, 2016 in U.S. District Court for the Eastern District of Pennsylvania.

Book Review: Intellectual Property and Climate Change, Edited by Josh Sarnoff

January 27th, 2017 by Eric Lane No comments »


Despite its title, this book is about much more than intellectual property and climate change.  While it does, of course, provide detailed treatments of IP and climate change law and policy, the topics covered in the new “Research Handbook on Intellectual Property and Climate Change” are diverse and far-ranging, even touching on food (for the body) and religion (food for the soul, for some).

Editor and contributor Joshua D. Sarnoff has organized the book into five general categories:  basic information on climate science and environmental and IP treaties and geopolitics; philosophical perspectives on IP and climate change including human rights, religion, and development; approaches to development and transfer of green technologies; specific IP doctrines; and contexts where climate change-IP considerations arise.

The first few chapters provide the reader with a solid introductory grounding in climate science, climate treaties, and IP treaties.

Then Carlos Correa gets into the developing countries’ perspective on IPR, reviewing familiar proposals such as compulsory licensing, excluding green technologies from patent protection, revoking patent rights in green technologies, and limiting terms of patents directed to green technologies.  Mostly non-starters, these policy tools have been detailed and advocated more forcefully elsewhere.  Nevertheless, their inclusion is essential for any compendium on IP and climate change.

Chapter 10 on developing country viewpoints stands out as providing particularly useful context.  Instead of simply saying the current state of affairs is inadequate and we need better technology transfer, Dalindyebo Shabalala lays out helpful and meaty (you can really sink your teeth into them!) definitions of technology transfer.  Those are followed by a useful review of IP and tech transfer developments in climate change treaty discussions over the years.

Sarnoff himself provides a taxonomy of choices for government funding of innovation and university research (Chapter 11) as well as a discussion on how the UNFCCC and other treaties relate to green patents in Chapter 16 on patents and climate change.

From there, the doctrinal IP section continues with a chapter on trade secrets and climate change (Chapter 17).  In it, Sharon K. Sandeen and David S. Levine propose changes to the law that would increase disclosure of trade secret information relating to climate change.

They make the point that heightening the disclosure requirements in this area might drive businesses away from relying on trade secrets toward more patent protection.  In view of the trade secret policies discussed here and the aforementioned proposals to weaken or eliminate patent protection on green technologies, one wonders where green tech innovators would turn to protect their technologies if all of these policies were enacted.

The copyright chapter by Estelle Derclaye discusses questions of access, dissemination, interoperability and pricing of copyrighted works relating to environmental issues (Chapter 18).  Such works might include green buildings and architectural plans, charts, maps, photographs, films, software, and databases.

After providing some context on eco-marks (including certification marks), green consumers and greenwashing, Christine Haight Farley suggests improvements to the certification mark registration process such as greater transparency in the certification standards, periodic review of those standards, and clearer terminology of the terms used for certification.

The book does suffer from what almost any such compilation would – patches of redundancy.  A reader of the full volume is treated to the basic principles of the UNFCCC treaty and the conflict between developed and developing countries not only in the introductory chapter on IPR under the UNFCCC treaty (Chapter 5) but also in the IP enforcement piece (Chapter 7), and Chapter 10 on tech transfer.   This is just one example.  In these chapters and others, the different authors go over the same principles, the same perceived barriers to tech transfer, and the same old proposed patent policy solutions.

Moreover, the compendium would have benefited from a chapter on green patent litigation.  There’s been so much of it over the last couple of decades, including some involving critical patents and substantially impacting some areas of green technology.  Hybrid vehicle technology company Paice’s enforcement efforts against Toyota and other automakers, GE’s two sets of litigation centered on a seminal variable speed wind turbine patent, and the Gevo-Butamax case come to mind, among others.

As mentioned above, one of the book’s strengths is that it goes well beyond the subject of intellectual property.  One of the novel contributions is an interesting chapter by Robert K. Musil on religious environmentalism in America, including religious climate activism (Chapter 9).

Another welcome perspective is the antitrust chapter by Michael Carrier discussing issues such as how to define the relevant market in green technology sectors, monopoly concerns such as refusing to license green technologies (though refusing to license is typically legally permissible and the prerogative of the patent owner), technical standards such as those in the smart grid sector, and how patent pools might be treated under antitrust law (Chapter 13).

On the whole, Sarnoff’s “Research Handbook on Intellectual Property and Climate Change” is packed with varied perspectives and essential information and is therefore a very useful guide for anyone interested in IP and climate change (and beyond!).  To have all this packed tightly into one book is a great thing.  I’m quite pleased to have it on my bookshelf.

Patentes Permanentes Verdes in Brazil; Battery Battles at the Board and Border

January 18th, 2017 by Eric Lane No comments »

Before turning to 2017 news, we’ll first briefly catch up on a few stories from December.

In early December, the Brazilian green patent priority examination program (see my original post here and a subsequent critique of the program here) became a permanent service.

Started as a pilot program by the National Institute of Industrial Property in April 2012, Resolution No. 175/2016 made the program permanent on December 6, 2016.

The requirements to participate in the program remain the same:

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.

Eligible green technologies fall under the following categories: alternative energy, transportation, energy conservation, waste management and agriculture.

During the pilot phase, 325 of 480 applications were accepted and expedited with an average prosecution time of about two years.  The Clarke Modet law firm reported on this here.

LG Chem logo

Previous posts (e.g., here and here) discussed the litigation between Celgard, a North Carolina company that manufactures specialty membranes and separators for lithium ion batteries, and LG Chem.

The patent at issue is U.S. Patent No. 6,432,586 (’586 Patent), entitled “Separator for a high energy rechargeable lithium battery” and directed to a separator including a ceramic composite layer and a polyolefinic microporous layer.  The ceramic layer has a matrix material and is adapted to block dendrite growth and prevent electronic shorting.

After the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office invalidated claims 1-11 of the ‘586 patent in an inter partes review, Celgard appealed.

In a one-line per curiam order handed down December 13, 2016, the U.S. Court of Appeals for the Federal Circuit affirmed the PTAB decision.


There was a major development in the litigation between chemical giant BASF and UChicago Argonne LLC (Argonne), on the one hand, and Belgium-based Umicore and Japan-based Makita Corporation involving two patents relating to cathode materials for lithium-ion batteries.

As reported in a previous post, BASF and Argonne filed a complaint in the U.S. International Trade Commisson (ITC) in February 2015 asking the ITC to investigate whether Umicore, Makita and their U.S. subsidiaries imported and sold in the United States lithium ion cathode materials and batteries that infringe U.S. Patent Nos. 6,677,082 (’082 Patent) and 6,680,143 (’143 Patent).

In a December 16, 2016 order, the ITC found that Umicore induced infringement of the asserted patents through conduct relating to imports of the battery materials.

The order expanded upon a prior determination by an ITC administrative law judge that Umicore was liable for contributory infringement of the patents.  The ITC also issued a limited exclusion order banning importation of Umicore’s lithium ion cathode materials into the United States.

The ‘082 and ‘143 Patents are 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.

Read BASF’s press release about the ITC decision here.

December 22nd, 2016 by Eric Lane No comments »


Green Patent Blog is on vacation.

 Happy Holidays!

Complete Sentences: Biofuel RIN Fraudsters Get Long Prison Terms

December 20th, 2016 by Eric Lane No comments »

Previous posts, e.g., here and here, discussed fraudulent biofuels credits schemes in which companies falsely claim to produce biofuels and sell fake credits on the Renewable Identification Numbers (RINs) market.

A RIN is a numeric code generated by a renewable fuel producer or importer that represents a gallon of renewable fuel, and certain “obligated parties” in the fuel industry and related businesses can acquire RINs as a way to comply with the U.S. Environmental Protection Agency’s (EPA) Renewable Fuel Standard Program.

There have been a number of such schemes exposed over the last few years, and some of the individuals perpetrating them prosecuted and punished.

Two such individuals were recently sentenced to long prison terms (121 months and 135 months) for their roles in a multi-state scheme sell fraudulent biofuel credits and fraudulently claim tax credits.

The story, the general parameters of which are sadly familiar to us by now, is that the two men operated shell companies purporting to purchase renewable fuel produced by a co-conspirator companies, on which credits had already been claimed and were not eligible for additional credits.  By a series of false transactions, they transformed the fuel back into feedstock for fuel production and sold it back to the co-conspirator companies, allowing credits to be claimed again.

One of the federal prosecutors who prosecuted the case called the sentence “just punishment” for crimes that “defrauded and undermined a federal program intended to further the energy independence of our nation.”

An Environmental Protection Agencey (EPA) official involved said the agency is “committed to eliminating fraud in the renewable fuels market” and “will continue to hold criminals accountable.”

Indeed, the EPA has promulgated additional regulations to ensure oversight of RIN generation and improve the RIN market and has teamed up with the Commodities Futures Trading Commission in an attempt to improve regulation and enforcement of RINs and renewable fuels markets.

The Justice Department press release can be found here.

Know No Truth: Federal Circuit Reversal of Hearsay Ruling Saves Biofuel Patent

December 7th, 2016 by Eric Lane No comments »


REG Synthetic Fuels, LLC (REG) owns U.S. Patent No. 8,231,804, entitled “Even carbon number paraffin composition and method of manufacturing same” (‘804 Patent).

The ‘804 Patent is directed to paraffin compositions containing primarily even carbon number paraffins and methods of making them.  Made from bio-renewable feedstocks, these saturated hydrocarbon chains are useful as phase change materials and can be used for home insulation.

Neste Oil Oyj (Neste), a Finnish oil refining company with a focus on advanced, low-emission transportation fuels, petitioned the U.S. Patent and Trademark Office for inter partes review of the ‘804 Patent.

The Patent Trial and Appeal Board (PTAB or Board) found claims 1, 3, 4 and 8 invalid as anticipated by a first prior art reference (Craig) and also found claims 1-3, 5 and 8 invalid as anticipated by a second prior art reference (Dindi).  REG appealed.

The statutory classification of the Dindi reference is crucial here:  it is a published patent application that qualified as prior art because it was filed before the ‘804 Patent application’s filing date.  This means that REG could remove Dindi as prior art if REG could marshal the requisite documentary evidence to show that the inventor of ‘804 Patent conceived of the invention before the Dindi filing date and was diligent in reducing the invention to practice.

Turns out REG did have such evidence, but the Board excluded critical portions of it as inadmissible hearsay.

On appeal, REG argued that the Board was incorrect to exclude the evidence, in particular Exhibit 2071 which consisted of emails between the inventor and third parties, in one of which the inventor stated:

[He has] had more difficulty than [he] expected trying to recover a 90+% purity nC18 product using [his] lab distillation glassware (80% purity C18 is the best [they] got).

This is significant because the claimed invention of the ‘804 Patent includes an 80 wt% purity C18 product.

The Board considered Exhibit 2061 to be hearsay because it did not verify the actual creation of the 80 wt% C18 product.

In a recent decision, the Court of Appeals for the Federal Circuit reversed this evidentiary ruling of the Board because Exhibit 2061 was not introduced into evidence for the truth of the statement therein.  Rather, the email itself provides evidence that the inventor conceived of the invention, irrespective of whether he actually created the product:

We find that the Board erred to the extent that it excluded the content of  Exhibit 2061 based on hearsay because REG offered Exhibit 2061 for the non-hearsay purpose to show that [the inventor] thought he had achieved 80 wt% purity C18 product. The act of writing and sending the email is, by itself, probative evidence on whether [the inventor] recognized – at the time that he had written the email – that the sum of the weight percentages of even-carbon-number paraffins in his compositions was at least 80 wt% and communicated this to a third party.

The court held, together with two other exhibits, Exhibit 2061 shows that the inventor of the ‘804 Patent “could create a composition with the claimed property of at least 80 wt% even-carbon-number paraffins” and was able to do so before the Dindi reference’s filing date:

[The email in Exhibit 2061] expressly states that he could achieve at least 80% purity C18 product, which was new in April 2008 because this product did not exist in the prior art, given the record before us.

So the Federal Circuit reversed the Board on conception of the invention and the admissibility of the Exhibit 2061 and sent the case back to the Board to determine whether the inventor was diligent in reducing the invention to practice, and REG and its ‘804 Patent survive to fight another day.

Exploring the Carbon Royalty Model

November 27th, 2016 by Eric Lane No comments »

In a previous post, John D. Vandenberg, a patent litigator in Portland, Oregon, laid out his vision of a carbon royalty:  using patents directly for the public good, by imposing a royalty to reduce carbon emissions.

A detailed discussion of the model can be found here in his Carbon Royalty Slide Deck and is illustrated below.


If you’re interested in exploring this idea please e-mail Mr. Vandenberg at


Cleantech in Court: Green Patent Complaint Update

November 16th, 2016 by Eric Lane No comments »

A number of new green patent complaints were filed in September and October in the fields of battery chargers, green cleaning products, LEDs, smart grid, solar mounting systems, and water conservation.


Battery Chargers

VoltStar Technologies, Inc. v. AT&T Mobility, LLC

VoltStar sued AT&T October 19, 2016 alleging infringement of U.S. Patent Nos. 7,910,833 (‘833 Patent) and 7,910,834 (‘834 Patent) relating to an energy saving power adapter/charger and accompanying cables.

The ‘833 Patent is entitled “Energy-saving power adapter/charger” and the ‘834 Patent is entitled “Energy saving cable assemblies.”   According to the complaint, the patents pertain to a battery charger and accompanying cables “that automatically shuts off when a device is fully charged or not plugged in, eliminating ‘vampire load.’ This feature reduces power consumption and extends battery life.”

The accused product is the AT&T ZERO Charger and accompanying cables..


Green Cleaning Products

Greenology Products, Inc. v. HealthPro Brands Inc.

A North Carolina company called Greenology Products sued HealthPro Brands in the U.S. District Court for the Eastern District of North Carolina.

Filed September 13, 2016, the complaint alleges that HealthPro’s FIT Organic cleaning products infringe U.S. Patent No. 9,217,127, entitled “Organic cleaning composition” (‘127 Patent).

The ‘127 Patent is directed to an organic cleaning mixture comprising from about five percent (5%) to about ninety five percent (95%) by weight soapberry extract, from about 0.1% to about 95% percent (95%) by weight saponified oil, and from about 0.5% to about thirty percent (30%) by weight of one or more of sodium carbonate, sodium hydroxide, potassium hydroxide, an alkali, and combinations thereof.



Seoul Semiconductor Co. et al. v. K-mart Corporation

In a lawsuit filed September 9, 2016 in U.S. District Court for the Central District of California, Seoul sued K-mart for infringement of eight LED patents:

U.S. Patent No. 6,942,731, entitled “Method for improving the efficiency of epitaxially produced quantum dot semiconductor components”

U.S. Patent No 6,942,731, entitled “Method for improving the efficiency of epitaxially produced quantum dot semiconductor components”

U.S. Patent No. 7,982,207, entitled “Light emitting diode”

U.S. Patent No. 7,626,209, entitled “Light emitting diode having active region of multi quantum well structure”

U.S. Patent No. 7,906,789, entitled “Warm white light emitting apparatus and back light module comprising the same”

U.S. Patent No. 7,951,626, entitled “Light emitting device and method of manufacturing the same”

U.S. Patent No. 8,664,638, entitled “Light-emitting diode having an interlayer with high voltage density and method for manufacturing the same”

U.S. Patent No. 8,860,331, entitled “Light emitting device for AC power operation”

U.S. Patent No. 9,240,529, entitled “Textured phosphor conversion layer light emitting diode”

The accused product is Spotlight’s Kodak LED Lighting Bulb 41063,


ilumisys, Inc. v. Woodforest Lighting Inc.

This lawsuit involves eleven patents relating to tubular LED replacements for fluorescent lighting tubes.

The complaint was filed September 15, 2016 in the U.S. District Court for the Southern District of Texas and accuses Forest’s MT8-120 and Univ8 TLED products of infringing the following patents:

U.S. Patent No. 8,093,823, entitled “Light sources incorporating light emitting diodes”

U.S. Patent No. 8,382,327, entitled “Light tube and power supply circuit”

U.S. Patent No. 7,976,196, entitled “Method of forming LED-based light and resulting LED-based light”

U.S. Patent No. 9,072,171,  entitled “Circuit board mount for LED light”

U.S. Patent No. 7,815,338,  entitled “LED lighting unit including elongated heat sink and elongated lens”

U.S. Patent No. 9,006,993,  entitled “Light tube and power supply circuit”

U.S. Patent No. 9,222,626,  entitled “Light tube and power supply circuit”

U.S. Patent No. 8,866,396,  entitled “Light tube and power supply circuit”

U.S. Patent No. 7,510,299,  entitled “LED lighting device for replacing fluorescent tubes”

U.S. Patent No. 8,282,247,  entitled “Method of forming LED-based light and resulting LED-based light”

U.S. Patent No. 8,573,813,  entitled “LED-based light with supported heat sink”


Orion Energy Systems, Inc. v. Energy Bank, Inc.

Orion Energy Systems, Inc. v. Green Creative LLC

In a complaint filed September 18, 2016 in federal court in Green Bay, Wisconsin, Orion Energy Systems (Orion) asserted two related lighting patents against Energy Bank.

The patents are U.S. Patent Nos. 8,337,043 and 8,858,018, each entitled “Modular light fixture with power pack” and directed to light fixtures including first and second raceways, a support structure extending between and coupled to the raceways, a plurality of LEDs coupled to the structure and spaced apart, and a power pack  electrically coupled to the LEDs.

The accused products are Energy Bank’s LightSource light.

Orion brought another lawsuit, this one against Green Creative, alleging that the defendant’s 2X2′ and 2X4′ LED Troffer Retrofit Kits infringe U.S. Patent No. 9,206,948, entitled “Troffer light fixture retrofit systems and methods.”

The complaint was filed in the U.S. District Court for the Northern District of California on September 30, 2016.


Jakuta Diodes, LLC v. Cree, Inc.

Jakuta Diodes, LLC v. American Honda Motor Co.

Jakuta Diodes, LLC v. Acuity Brands, Inc.

Jakuta Diodes, LLC v. Ford Motor Company

Jakuta Diodes, LLC v. General Motors Company

Jakuta Diodes, LLC v. Ledengin, inc.

Jakuta Diodes, LLC v. Soraa, Inc.

Jakuta Diodes, LLC v. Teledyne Reynolds, Inc.

Jakuta Diodes filed eight lawsuits on September 21, 2016 against a bunch of defendants including LED makers Acuity Brands, Cree, Ledengin, Soraa, and Teledyne Reynolds and automakers Honda, Ford and GM.

The complaints were all filed in U.S. District Court for the Eastern District of Texas and all assert the same patent – U.S. Patent No. 6,079,854 (‘854 Patent).

The ‘854 Patent is entitled “Device and method for diffusing light” and directed to a lighting device to diffuse a beam of light such as a main light beam in a headlamp, thereby substantially reducing the glare experienced by oncoming drivers and permitting high beams of the headlamp to be used in the presence of the oncoming drivers.

The light has a region segregated into a plurality of channels into which light from a concave lens is radiated to provide a diffused pattern of dispersed light to exit the front end of the lighting housing.
The Cree and Honda complaints (jakuta-diodes-llc-v-cree-inc; jakuta-diodes-llc-v-american-honda-motor-co-inc) are illustrative.  The accused Cree products are the DiamondFacet Lenses and WaveMax Technology, and the accused Honda products are the Jewel Eye LED Headlights sold in the Acura RLX model automobiles.


Blackbird Tech, LLC v. DAMAR Worldwide 4 LLC

Blackbird Tech, LLC v. EiKo Global, LLC

Blackbird Tech, LLC v. Halco Lighting Technologies, LLC

Blackbird Tech, LLC v. Health in Motion LLC et al.

Blackbird Tech, LLC v. Hyperikon, Inc.

Blackbird Tech, LLC v. Innoled Lighting Inc.

Blackbird Tech, LLC v. LEDi2, Inc. et al.

Blackbird Tech, LLC v. RemPhos Technologies LLC

Blackbird Tech, LLC v. Tadd, LLC

Blackbird Tech, LLC v. LLC Espen Technology Inc.

Not to be outdone, Blackbird fired off ten complaints in Delaware federal court October 19, 2016.

Each complaint asserted U.S. Patent No. 7,086,747, entitled “Low-voltage apparatus for satisfying after-hours light requirements, emergency light requirements, and low light requirements” (‘747 Patent).

The ‘747 Patent is directed to an energy efficient lighting apparatus wherein the circuit board is positioned adjacent the ballast cover so that the plurality of light-emitting diodes protrude through the plurality of ballast cover holes in the ballast cover, the lighting apparatus is coupled to a wall switch, and the illumination of the light-emitting diodes is controllable based upon the position of the wall switch.

The Innoled Lighting complaint is representative and says the defendant is infringing the ‘747 Patent by selling linear LED lighting products.


Lexington Luminance LLC v. LG Electronics et al.

In a complaint filed October 27, 2016 in U.S. District Court for the District of Massachusetts, Lexington Luminance accused LG of infringing U.S. Patent No. 6,936,851 (‘851 Patent).

The ‘851 Patent is entitled “Semiconductor light-emitting device and method for manufacturing the same” and is directed to LEDs having textured districts on the substrate such that inclined layers guide extended defects to designated gettering centers in the trench region where the defects combine with each other.  This structure reduces the defect density of the LEDs.

The accused products include various televisions, computer displays, mobile phones, and other electronic devices using LED illuminated LCD displays.


CAO Lighting, Inc. v. Light Efficient Design et al.

CAO Lighting brought an infringement action (cao-lighting-inc-v-light-efficient-design-et-al) against Light Efficient Design in federal court in Idaho on October 28, 2016.

CAO alleges infringement of U.S. Patent No. 6,465,961 (‘961 Patent), entitled “Semiconductor light source using a heat sink with a plurality of panels” and directed to an LED light source with a heat sink that has multiple panels.  Each panel may host one or more LED chips, which can be arranged to transmit light in multiple directions.  More details on this patent can found in my previous post here.

The accused products include the 8000 Series lighting products such as the LED-8039E57 bulb and LED-8024E retrofit product.

Smart Grid

Grid Innovations, LLC v. The Electricity Reliability Council of Texas

GRID Innovations sued the Electricity Reliability Council of Texas (ERCOT) for alleged infringement of two patents relating to trading and routing electric power.

The complaint was filed September 2, 2016 in federal court in Tyler, Texas and accuses ERCOT’s electric power trade and distribution systems, specifically the day-ahead and real-time energy markets of infringing the patents.

The asserted patents are U.S. Patent No. 7,945,502 (‘502 Patent) and 9,256,905 (‘905 Patent).

The ‘502 Patent is entitled “Online trading and dynamic routing of electric power among electric service providers” and directed to a method and system for trading electric power on a spot market and dynamically matching bids and asks and routing the electric power in accordance with the matches to effect the settled trades.

The ‘905 Patent is entitled “Intelligent routing of electric power” and directed to a method and system for dynamically routing electric power in real time in accordance with parameters submitted by buyers and sellers of electric power using a feedback control scheme.


Clean Energy Management Solutions, LLC v. Cascade Energy, Inc.

Clean Energy Management Solutions, LLC v. Schneider Electric USA, Inc.

Clean Energy Management Solutions, LLC v. Siemens Corporation

Clean Energy Management Solutions, LLC v. SmartLabs, Inc.

Clean Energy Management Solutions, LLC v. Wink Inc. et al.

Clean Energy Management Solutions (CEMS) filed three complaints on September 6, 2016 in federal court in Marshall, Texas asserting U.S. Patent No. 6,577,962 against Cascade Energy, Schneider Electric, and Siemens (Cascade Energy complaint; Schneider Electric complaintSiemens complaintSmartLabs complaintWink complaint).

Entitled “System and method for forecasting energy usage load,” the ‘962 Patent is directed to systems and methods for forecasting energy usage load for a facility including a parameter identification module for determining periodic energy load usage of the facility and a load prediction module for generating energy usage load forecast profiles for the facility.  A set of matrices may include a matrix for storing coefficients for determining periodic changes in energy load usage, and a model parameter matrix for storing load parameter information.

The accused products are Cascade Energy’s SENSEI system, Schneider’s PowerLogic ION EEM system, and Siemens’ SIMATIC B.Data system.

On October 28th and 31st, respectively, CEMS also sued SmartLabs and Wink in the same court, alleging that SmartLabs’ Insteon home automation system and Wink’s home security and automation system infringe U.S. Patent No. 8,035,479 (‘479 Patent).

The ‘479 Patent is entitled “Mesh network door lock” and relates to systems and methods for sending a code from a mesh network key and wirelessly communicating the code with one or more mesh network appliances over a mesh network such as ZigBee, receiving the code over the mesh network by a mesh network lock controller, and providing access to the secured area upon authenticating the code.


JSDQ Mesh Technologies LLC v. S & C Electric Company

On October 20, 2016, JSDQ filed suit against S & C Electric Company in U.S. District Court for the Norther District of Illinois, alleging infringement of four patents relating to wireless routing systems used in smart grid networks.

The patents-in-suit are U.S. Patent Nos. 7,286,828 and 7,916,648, both entitled “Method of Call Routing and Connection,” RE43,675 entitled “Wireless Radio Routing System,” and RE44,607entitled, “Wireless Mesh Routing Method.”

JSDQ alleges that S& C Electric infringes the patents-in-suit because of its deployment of the SpeedNet Radio Networks.


Solar Mounting Systems

Rillito River Solar, LLC v. Wencon Development, Inc.

Rillito River Solar sued Wencon September 23, 2016 in the U.S. District Court for the District of Arizona.

The complaint alleges that Wencon’s Quick Mount roof mounting system infringes three patents relating to solar mounting systems.

The asserted patents are U.S. Patent Nos. 6,526,701, entitled “Roof mount,” 9,010,038, entitled “Tile roof mount” and 9,422,723, entitled “Roofing grommet forming a seal between a roof-mounted structure and a roof.”


Water Conservation

Water Conservation Technology Int’l v. Roseburg Forest Products Co. et al.

This lawsuit involves five related patents pertaining to technologies for treating water in an environmentally friendly matter.

The patents are:

U.S. Patent No. 6,929,749, entitled “Cooling water scale and corrosion inhibition”

U.S. Patent No. 6,949,193, entitled “Cooling water scale and corrosion inhibition”

U.S. Patent No. 6,998,092, entitled “Cooling water scale and corrosion inhibition”

U.S. Patent No. 7,122,148, entitled “Cooling water scale and corrosion inhibition”

U.S. Patent No. 7,517,493, entitled “Cooling water corrosion inhibition method”

The complaint was filed by Water Conservation Technologies International (WCTI) September 9, 2016 in the U.S. District Court for the Eastern District of California.

WCTI alleges that the defendant continues to use the patented technologies for treating a cooling tower at defendant’s biomass cogeneration plant after termination of a contract between the parties.