Green Patent Blog

The claims are the legally operative part of a patent for infringement purposes.  That is, if an accused device contains all of the literal elements of a patent claim or equivalents thereof, the device infringes that claim.  Patent claims have two parts:  the preamble (e.g., “a seating apparatus comprising:”) and the body (e.g., “a plurality of legs; a seat; and a back”). 

Usually an infringement analysis involves only the elements in the body of a claim.  But sometimes, depending on the relationship between the preamble and the body, the terms in the claim preamble are considered in infringement.  Whether elements in a preamble should be part of the infringement analysis can be a hotly contested, and dispositive, question in patent litigation.

That was the case in a currently pending lawsuit in New York federal court between retired professor and LED innovator Gertrude Neumark Rothschild and Durham, North Carolina LED maker Cree, Inc. (Cree).  In a recent decision (opinion.pdf), Judge William C. Conner denied Cree’s motion for summary judgment that it did not infringe one of Rothschild’s patents because the court determined that the preamble of an asserted patent claim should not be part of the infringement analysis.

In 2005, Rothschild sued Cree for patent infringement, alleging that its methods of producing gallium nitride and aluminum gallium nitride LEDs infringed two of her patents.  U.S. Patent Nos. 4,904,618 (’618 patent) and 5,252,499 (’499 patent) are directed to methods of making LEDs capable of emitting short wavelength (green or blue) light. 

The patents address the problem of “doping” wide band gap semiconductor materials, an essential step in creating adequate conductance for the materials to function as LEDs.  Doping means adding impurities to a semiconductor to increase the number of free charge carriers. 

The preamble of claim 10, the only asserted independent claim of the ‘499 patent, claimed a ”method of forming a low resistivity semiconductor from a wide-gap semiconductor substrate that has a tendency to become compensated when it is doped, comprising…”  Cree tried to dispose of the ‘499 patent by a summary judgment motion in which it argued that this preamble should be part of the infringement analysis, and that its accused production process does not infringe the patent because it does not include the elements of the preamble.

Cree also contended that Rothschild waived her right to raise the issue of excluding the preamble from the infringement analysis because she failed to make that argument earlier in the case, and, in particular, remained silent about it during the court’s claim construction proceedings (Rothschild even offered constructions for terms appearing only in the preamble).  The court disagreed, noting a lack of precedent on such waivers and that depriving Rothschild of the argument would cause her substantial prejudice, likely destroying her infringement claim against Cree.

Generally, a claim’s preamble becomes part of the infringement analysis (i.e., the preamble is “limiting”) if it recites essential features of the invention.  Stated another way, if the body of the claim recites a structurally complete invention, the preamble is not necessary for a determination of infringement.

Judge Conner found that the body of claim 10 adequately describes a complete process and that reference to the preamble is not necessary to supply any missing steps or make the claim body comprehensible.  Rather, he found that the preamble merely specifies a desirable result achieved by the process recited in the body of the claim, i.e., formation of a low-resisitivity semiconductor from a wide-gap semiconductor substrate.

Accordingly, the court held that the preamble was not part of the infringement analysis.  Because Cree’s non-infringement arguments hinged on elements of the preamble, the court denied the motion for summary judgment.  Now the case will go forward to trial, or, if recent history is any guide, Cree will settle and take a license from Rothschild. 

I recently received a second office action (secondofficeaction.pdf) from the U.S. Patent & Trademark Office (PTO) regarding my application to register the GREEN PATENT BLOG eco-mark.  The trademark examiner rejected the application again on the same ground - that the mark is “merely descriptive” of the services offered.  The examiner re-stated his position that “GREEN” describes clean tech subjects, “PATENT” is a type of intellectual property, and “BLOG” is a generic term.

I had asserted that the mark is not merely descriptive because “GREEN” has many meanings, but the examiner rejected that argument, stating that the descriptiveness inquiry focuses on the relevant services.  That is, the fact that “GREEN” may have different meanings in other contexts does not control here because the term immediately describes Green Patent Blog’s (GPB) services of providing information on clean technology and renewable energy.

The office action included attached evidence purporting to show “green patents” used in a descriptive manner, including some GPB pages, and the examiner seemed to relish quoting my own words against me (maybe I should sign him up for free e-mail alerts!). 

Incidentally, I knew that referencing “green patents” in my posts could provide ammunition to the examiner, but decided that the importance of generating Google hits for that term outweighed the downside of compromising my trademark prosecution.

The office action was made “final,” which means I can now appeal to the Trademark Trial and Appeal Board.  Alternatively, I could file another response with the examiner.  I’m mulling my options now and will of course report on the next step in due course.

The U.S. Environmental Protection Agency’s (EPA) SmartWay program educates consumers on the environmental impact of various transportation options.  The program includes a ratings system for vehicles, information on renewable fuel options and a project to reduce emissions in the freight and transport vehicle sector.

The centerpiece of the SmartWay program is the personal vehicle ratings and certification system.  The certification system features the EPA’s Green Vehicle Guide, which scores vehicles based on air pollution and greenhouse gas emissions.  Vehicles that achieve a high enough score are SmartWay certified. (see the Greenbiz article)

A certifiable score means at least 6 out of a possible 10 for both the air pollution rating and the greenhouse gas emissions rating and that the two ratings combined add up to at least 13.  The air pollution rating is determined by how much the vehicle’s tailpipe emissions contribute to smog and health issues.  The greenhouse gas score is based on carbon dioxide, nitrous oxide and methane emissions and is tied to the fuel economy of the vehicle.

The certification program uses the SmartWay logo, and the EPA owns two eco-marks for the logo.  Both incorporate a leaf with a road running along the stem and through the center of the leaf with dashed divider lines. 

U.S. Registration No. 3,220,604 (’604 registration) (604registration.pdf) issued in March of 2007 for a certification mark that includes the words “US EPA Certified SmartWay” alongside the leaf component (see below).  The listing of goods covers “[v]ehicles, namely automobiles and trucks.”

In July of last year, the EPA also applied to register a SmartWay service mark for educational materials and services and public awareness relating to cleaner and more efficient transportation options.  U.S. Application No. 77/225,038 (’038 application) (038application.pdf) includes the same leaf component and the word “SmartWay” without the “US EPA Certified” language (pictured at the top of this post).

One interesting sidenote is that the EPA had a little trouble with its ‘038 application, which was rejected for being too similar to the Wisconsin Department of Transportation’s (WDOT) SmartWays trademark registration (smartwaysregistration.pdf).  The EPA overcame this problem by getting WDOT’s consent to the EPA’s use of its mark and entering into a concurrent use agreement with the state agency (responseandconsent.pdf).

In navigating the SmartWay web pages and discovering that the car I drive is SmartWay-certified, I noticed that the EPA seems to be misusing its SmartWay eco-marks.  The ‘604 registration logo (the one that includes the word “US EPA Certified”) is the certification mark, so it should be the one used to identify certified vehicles. 

However, the ‘604 registration logo is conspicuously absent from the vehicle certification sections of the EPA’s web site, which instead feature the simpler ‘038 application mark (pictured at the top of this post).  In addition, when one searches the Green Vehicle Guide, the leaf component alone appears beside the SmartWay certified vehicle listings. 

While the leaf component is arguably the key feature for consumer recognition purposes, the EPA probably should keep its SmartWay trademark house in better order and be more strict about using its certification mark for certification purposes.

Suzanne Badawi is a partner and insurance litigator at Luce, Forward, Hamilton & Scripps and the head of the firm’s Climate Change & Sustainable Technology practice.  Her article, “Global Warming: Are You Covered” appears in this month’s California Lawyer magazine.

The article explores whether claims made to defray the costs associated with carbon dioxide emissions will be covered by comprehensive general liability (CGL) insurance policies.  According to Badawi, the answer depends on the wording of the pollution exclusion in the policy and whether carbon dioxide is deemed a pollutant. 

Most CGL policies today have an “absolute pollution exclusion” (APE), which means they provide no coverage for the release of pollutants into the environment.  Not surprisingly, the scope of the exclusion often turns on the question of what constitutes a pollutant.  The article takes the reader through key cases that have ruled on the definition of “pollutant” and notes that the APE has not yet been addressed in the context of carbon dioxide emissions. 

Badawi speculates that the Supreme Court’s 2007 decision in Massachusetts v. EPA, which held that carbon dioxide is a pollutant subject to regulation by the EPA, provides an opening for insurers to argue that the greenhouse gas should be subject to the APE.

I’m always interested in how global warming impacts areas of the law outside of my field, and Badawi’s article is an interesting read.  With all the legal and regulatory efforts to curb greenhouse gas emissions, the article notes that emitters are looking for ways to defray related compliance and litigation costs:

And with that, the “global warming insurance claim” has arrived. 

DG Cogen Partners, LLC (Cogen) is a California-based installer and operator of energy efficient power systems, including cogeneration systems.  Hess Microgen (Hess) designs, manufactures and sells cogeneration units, including the Hess Microgen 200 Packaged Cogeneration System (Microgen 200), which runs on engines made by Daewoo Heavy Industries America (Daewoo) (now Doosan Infracore America).

Cogeneration technology, also known as combined heat and power (CHP), uses fuel (usually natural gas) to produce electricity and, unlike traditional power systems, recycles and uses the heat released in the process.  By some estimates, if the energy lost in the form of waste heat were harnessed it could provide one-fifth of the country’s energy needs.

Earlier this month, Cogen sued Hess, Daewoo, Doosan Infracore America and Advanced Power Distributors (APD) in federal court in San Francisco for damages Cogen allegedly suffered due to a fleet of faulty cogeneration units.  The complaint (cogencomplaint.pdf) alleges, among other things, false advertising, unfair competition, breach of contract, breach of warranty and fraud.

In 2004, Cogen purchased a fleet of Hess cogeneration units, including Microgen 200s, from a third party, becoming the assignee of the third party’s purchase agreement with Hess.   According to the complaint, Hess agreed to provide long-term maintenance for the units as required. 

Cogen alleges that, prior to and at the time of its purchase, Hess misrepresented the capabilities of the cogeneration units through statements, technical documents and advertising and failed to disclose flaws in the products.  In particular, Cogen says Hess stated that the units contained “rich burn” engines that generated high thermal output when the engines were actually “lean burn,” which provide lower output and require more steps to meet regulatory compliance.

The complaint further alleges that the units subsequently failed completely or did not generate electricity at the rated capacity.  After repeated notifications and requests for Hess to remedy the problems, instead of repairing or replacing the units, Hess recommended that Cogen contact Daewoo to replace the engines.  Daewoo, through its distributor APD, retrofitted the cogeneration units with new engine heads, but Cogen alleges that the replacements did not correct the operational problems.

Cogen has asked for damages to compensate for its lost revenue, the purchase price of the units and retrofit parts, the cost of service and maintenance and other business losses. 

If the allegations in Cogen’s complaint are true, it would be a shame.  Energy efficiency technology, particularly recycling waste heat by congeneration, is too important to be compromised by false claims, faulty equipment and shoddy service.