Green Patent Blog®

Earlier this month, Sprite Industries sued Culligan in the Central District of California for infringement of a patent on a shower filtration device.  The patent covers a combination showerhead and water filter held together in a single housing.  The housing has top and bottom mating halves that are either screwed together or threaded together, a water filter assembly secured in the housing and a baffle to direct the water flow through the filter.  The patented device reduces potential head bumps to the bather because it takes up less shower space than prior art devices, which typically required that a separate shower head be attached to a filter outlet.  The accused device is Culligan’s wall-mount filtered showerhead.  

Section 120 of the patent laws allows a patent applicant to file “continuation” applications from a previously filed “parent” application.  Each continuation in a patent “family” is entitled to the same filing date as the original application as long as the continuations specifically reference the prior applications in the family and disclose all of the same material.  Establishing a continuous chain of priority to an early filing date can be critical to preserving the “novelty” of an invention because, if the chain is broken, intervening prior art can render a “child” or “grandchild” patent invalid as “anticipated” (i.e., not novel).  A broken chain can also transform one’s own “grandparent” or parent application into prior art that could invalidate subsequent related patents or applications.

Through continuation practice, Zenon obtained a family of patents directed to water treatment and filtration systems.  Zenon sued U.S. Filter, alleging infringement of its grandchild patent.  The invention of the grandchild patent consists of two critical elements - a vertical skein and a gas distribution system.  The skein includes porous or semipermeable fibers potted in a solid resin and a collection means to collect permeate from the ends of the fibers.  The skein is submerged in water, the water flows into the fiber array, and the permeate is collected from the ends of the fibers.  For the process to work effectively, the surface of the fibers must be kept free of particulate matter to ensure the free flow of permeate over an extended period of time.  The gas distribution system generates a cleansing gas, and the resulting gas bubbles keep the fibers clean by scrubbing them and causing them to scrub against each other.

Both the grandparent and the grandchild patents disclosed the skein and the same type of gas distribution system.  However, the intervening child patent disclosed a different gas distribution system and incorporated by reference “relevant disclosures” only relating to the skein.  Because the child did not actually disclose the original gas distribution system and failed to incorporate by reference either the entire grandparent application or the original gas distribution system, the U.S. Court of Appeals for the Federal Circuit held that Zenon had lost its continuous chain of priority to the grandparent application.  The chain was broken by the deficient disclosure of the intervening child patent, and the grandparent patent was transformed into prior art that invalidated the grandchild.

Zenon’s “continuing” problems could have been avoided by doing one of two things: simply copying and pasting the entire disclosure of the grandparent application into the intervening child application, or expressly incorporating by reference the entire grandparent application in the child application.

PNC Financial Services (PNC) has more environmentally friendly buildings than any other company.  Forty-two of its buildings, including 15 of its bank branches, have received the U.S. Green Building Council Leadership in Energy and Environmental Design (LEED) certification.  Recently, PNC got a federal registration for the service mark GREEN BRANCH, turning the bank’s green ways into a brand.  (read the article here)

But PNC had to wage a three and a half year battle with the U.S. Patent & Trademark Office (PTO) to get the registration.  The trademark examiner twice rejected PNC’s application on the ground that GREEN BRANCH is merely “descriptive” of financial services offered in environmentally friendly facilities.  (a trademark can’t be registered with the PTO if it is a generic term or is descriptive of goods or services because that would restrict competitors from conveying information about their goods or services).  PNC appealed the examiner’s decision to the PTO’s Trademark Trial & Appeal Board.  The Board decided that PNC could have the registration for GREEN BRANCH because financial services are not typically associated with environmentally friendly characteristics, so the connection between the mark and PNC’s services is too remote for the mark to be merely descriptive.

PNC truly is a green company, but allowing registration of green trademarks as ordinary marks could lead to abuse and misleading brands.  The Matter Network story warns of the potential for “greenwashing” and reminds us to investigate claims of green business practices.  It seems that green trademarks may be better categorized as certification marks, which instead of indicating commercial source, certify that goods or services meet certain quality or manufacturing standards.  Certification marks are owned by the organizations that set the standards and used by companies that meet the standards and receive the certifications.  Indeed, the U.S. Green Building Council, a trade group that sets standards for green buildings, has applied for a certification mark for the LEED-certified seal it awards to buildings that meet those standards.

There’s an interesting story on matter network today about companies obtaining “green” trademarks to highlight their environmentally friendly business practices.  More on this later…

Welcome to Green Patent Blog, a site dedicated to discussion and analysis of intellectual property issues in clean technology. Although there a lot of blogs about intellectual property law and several about clean technology, I haven’t seen a site that places the ideas of this important industry into the context of the law that protects them. This blog seeks to do that by reporting on significant court decisions, highlighting interesting newly-issued patents and discussing other legal and technological developments in clean technology. I hope this site will provide some insight to those who develop and market clean tech and seek to protect the intellectual property rights in their technology. In Green Patent Blog I hope to contribute a little bit to protecting the ideas that are preserving the planet.