Green Patent Blog®

In February, I filed a trademark application (gpbapplication.pdf) in the U.S. Patent & Trademark Office (PTO) for GREEN PATENT BLOG.  I figured I would compromise my credibility in matters of green intellectual property (IP) if I didn’t take available measures to protect my own green IP.

In the application, I avoided the trouble with eco-marks that I discussed in a couple of previous posts (see here and here).  That is, I drafted the listing of services to indicate their green aspect.  My listing is as follows:

ON-LINE JOURNALS, NAMELY, BLOGS FEATURING NEWS, INFORMATION AND LEGAL ANALYSIS RELATING TO INTELLECTUAL PROPERTY LAW ISSUES IN THE CLEAN TECHNOLOGY AND RENEWABLE ENERGY INDUSTRIES

A few weeks ago, the PTO issued a first Office Action (gpboa.pdf) in which the trademark examiner rejected GREEN PATENT BLOG as ”merely descriptive” of blogs that provide information on green technology (a trademark can’t be registered with the PTO if it is a generic term or descriptive of goods or services because that would restrict competitors from conveying information about their goods or services). 

Specifically, the examiner noted that BLOG is generic for blogging services, and GREEN PATENT describes the subject matter of the blog.  The Office Action stated that GREEN describes things that involve clean technology or renewable energy, and PATENT is generic for a form of intellectual property.  Finally, the examiner attached some evidence of internet usage of “green patents” that he says shows that the term describes clean technology patents.

I will be formulating a response to the Office Action in the next week or two and will report on it once it’s filed.  But don’t worry - Green Patent Blog will fight the good fight.  I’ll go all the way to the Supreme Court if I have to.

In the latest chapter of a lawsuit that has become a stark demonstration of the futility of patent litigation, Japanese LED maker Nichia lost its motion for attorney’s fees in a design patent dispute with Korean competitor Seoul Semiconductor (Seoul).  Nichia had moved for a fee award of about $2.5 million.  In February, Nichia won a Pyrrhic victory when it obtained a judgment against Seoul for $250 (the actual money damage was a paltry $62, but the statutory minimum award for design patent infringement is $250) in a case that cost both sides millions of dollars in legal fees.

Section 285 of the patent statute provides for the award of attorney’s fees to the prevailing party in “exceptional cases.”  A case may be deemed exceptional for many reasons, including where infringement is found to be willful or a party has engaged in litigation misconduct.  However, an award of attorney’s fees is discretionary, and a judge can deny attorney’s fees even in exceptional cases.

Here, despite a jury verdict that Seoul had willfully infringed four of Nichia’s LED design patents, Judge Maxine M. Chesney of the U.S. District Court in San Francisco denied attorney’s fees because Nichia’s ultimate claim for relief was based on such a small monetary loss.  Judge Chesney noted that Nichia proceeded with the litigation after its claim for inducing infringement (which, if successful, could have resulted in damages of over $4 million) was dismissed on summary judgment.

The court’s order (order.pdf) characterized Nichia’s attempt to pursue the remaining allegations of direct infringement based on only two sales in the U.S. as the use of a “sledgehammer to kill a gnat” and noted that Seoul spent about $2 million in legal fees to defend that portion of the case.

Judge Chesney also observed that the parties are engaged in other disputes in Korea and Japan and suggested that Nichia’s persistence here may have been an attempt to gain “some unstated ancillary advantage over defendants in Asia.” 

Although that may have been Nichia’s motivation, there is nothing that prevents a patent holder from pursuing a “de minimis” injury.  A patentee has the right to enforce its patent even for tiny damages amounts:  the Federal Circuit’s opinion in Embrex, Inc. v. Service Engineering Corp. held that the patentee can sue for a de minimis amount so long as the lawsuit is not “performed for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry.”  The result here guaranteed one thing - no one was amused by this lawsuit.

Greenline Industries (Greenline), based in Larkspur, California, designs processors that convert feedstocks such as seed oils and animal fats into biodiesel fuels.  Greenline’s proprietary technology provides waterless systems to clean the fuel, allowing producers to avoid the time and money associated with introducing water into the process and later separating it out.  Greenline also enjoys an exclusive worldwide license to continuous flow technology, which greatly increases its processors’ production capacity. 

In 2006, Greenline and Arkansas engineering firm Agri-Process Innovations (API) created a venture, now called AP Fabrications (APF), for the purpose of installing Greenline biodiesel plants.  In 2007, Greenline gave up its ownership rights in the venture, and API became the sole owner of APF.

Last month Greenline sued API and APF in federal court in Oakland, California for anticipatory breach of contract, misappropriation of trade secrets, false advertising and a declaratory judgment that Greenline owns the copyrights in its processor designs.  Greenline alleges that its vendor agreement with APF provided that Greenline would be exclusively responsible for the design of biodiesel processing units while APF’s role was limited to installation of the units.  Greenline also contends that the agreement allowed API to sell the processors but required that they be marketed as “Greenline Industries” plants.

The trigger for the lawsuit was a May 5, 2008 letter in which API and APF told Greenline they were terminating the vendor agreement and demanded compensation for (unspecified) intellectual property rights created by API and used by Greenline.  Greenline alleges this repudiation of the agreement constitutes anticipatory breach of contract.  

According to the complaint, API also claims rights to Greenline’s technology through statements on its web site that API designs the processing units.  These and other statements implying ownership of the processing techniques, as well as claims of responsibility for the design of specific processing plants, form the basis for Greenline’s claims of false advertising.

While the anticipatory breach and false advertising claims seem reasonably well-founded, it’s hard to see how API/APF’s actions constitute misappropriation of trade secrets, considering that the only allegations of theft of intellectual property in the complaint are the May 5 letter and the statements on API’s web site. 

The Uniform Trade Secrets Act (upon which many state trade secrets laws are modeled) defines misappropriation as acquisition of a trade secret by someone who knows or should know it was acquired by improper means or disclosure of a trade secret that was improperly acquired.  The facts of the complaint suggest that any acquisition or disclosure of Greenline’s proprietary information by API or APF occurred pursuant to the vendor agreement, which was in force until last month.  Simply making misrepresentions of ownership of a particular proprietary technology to third parties would not seem to rise to the level of misappropriation.

The other striking thing about this dispute is the extremely short time period between API/APF’s letter to Greenline terminating the agreement (May 5, 2008) and the date Greenline filed the lawsuit (the complaint is dated May 12, 2008).  This rapid turnaround suggests either that tensions were brewing for a while or the two sides made little attempt to resolve the dispute before resorting to litigation.

I received an e-mail recently from the folks at FreeHand Systems (Freehand) about the MusicPad Pro Plus (MusicPad), a patented device that can save reams of paper by electronically storing and displaying sheet music.  The MusicPad’s LCD back-lighting also obviates the need for external music stand light fixtures.

The MusicPad is covered by Freehand’s U.S. Patent No. 6,483,019 (’019 patent), which is directed to a system for displaying music including an internet server, a computer, a plurality of viewers and a plurality of styluses.  Musical compositions are downloaded from the internet (including one of FreeHand’s own web sites, which offers 98,000 digital music scores) and stored in the computer’s memory.  The computer sends the musical compositions to the viewers, which have memories to store the compositions. 

The musician reads the compositions from the viewer (shown above), which, at 13.3″ x 9.9″ x 1.8″ and weighing about four pounds, can fit on a music stand.  The stylus allows the musician, conductor or bandleader to annotate the musical composition in the viewer, and save the annotations.  Multiple annotations by different people can be overlayed and saved in the MusicPad.

The first thing I wondered was how the MusicPad “knows” when to “turn the page” of the musical composition.  There the device relies on prior art; the ‘019 patent incorporates by reference U.S. Patent No. 5,760,323 (’323 patent), which discloses a display stand that can advance the pages of the composition by a hand- or foot-operated actuator, sound translation software which “hears” the musical sounds and translates them into the notes on the page, or a timed interval.

The claims and examples in the ‘019 patent primarily contemplate multiple viewers displaying multiple groups of a musical composition to multiple users, with variations in the composition within and among the groups, i.e., a musical score for an orchestra.  Perhaps institutional performing groups like the philharmonic orchestras around the world might invest in MusicPads for their players.  For the average working musician, however, the $899 price tag could be prohibitive. 

At the moment, FreeHand does not appear to be marketing the MusicPad as an environmentally-friendly device.  If they do consider marketing the MusicPad as a “green” solution for musicians, they should first substantiate the device’s environmental benefits (i.e., by estimating whether the environmental gains from the paper saved by using the device would offset the impact of the energy the device uses).  But it seems that the potential is there for bringing an increasingly paperless world to the world of music.

If you’ve always wanted to put a wind turbine on your roof but thought it would be too big or too loud, you’re not alone.  The primary challenges in adapting wind turbines for personal use have been to overcome the fact that they are too unwieldy for small buildings and generate too much noise for densely populated areas.  The new Swift turbine, developed by Scottish energy products and solutions company Renewable Devices, overcomes those obstacles with a nearly silent device that has a blade/ring diameter of only seven feet and requires only a few feet of mounting space. (see the Inhabitat story and the product specs)

Wind turbine noise comes from aerodynamic sources (i.e., the air) and mechanical sources (i.e., the turbine assembly).  In traditional wind turbine designs, air flowing along the blades and off the ends of the blades generates noise.  Additional noise can be caused by vibration of the turbine assembly during high winds and turbulent airflow common in urban areas. 

The new turbine design covered by Renewable Devices’ U.S. Patent Application Pub. No. 2006/0244264 addresses these problems in several ways.  First, the turbine has a circular diffuser (21) that rings the turbine blades.  In operation, when the airflow reaches the ends of the blades, it contacts the diffuser and proceeds in a circumferential path instead of flowing off the ends of blades.

The Swift turbine also has a furling device (50) with tailfins (53, 54).  When the airflow exceeds a certain speed, the furling device rotates the rotor to maintain the direction of the airflow in line with the turbine’s rotational axis.  In excessively high winds, the turbine rotor can be rotated out of the airflow altogether.  These measures reduce the vibrations of the turbine assembly components. 

Finally, the Swift turbine has a mounting structure that includes a rubber core to absorb vibrations before they spread upward to the moving parts of the turbine assembly. 

So the time to put a personal wind turbine on your roof is now.  The Swift personal wind turbines, which are being manufactured by Cascade Engineering of Grand Rapids, Michigan, will be commercially available next month.