Green Patent Blog®

Suntech Power Holdings (”Suntech”) is a Chinese solar module provider specializing in building-integrated photovoltaics.  Suntech owns U.S. Trademark Registration No. 3,111,705 (”‘705 registration”) for its SUNTECH design mark (pictured above).

Last month Suntech sued competitor Shenzhen Xintian Solar Technology Co. and its subsidiary Sun Tech Solar (collectively “Sun Tech Solar”) in federal court in San Diego for alleged infringement of the ‘705 registration and its unregistered SUNTECH word mark.

The ‘705 registration (suntechreg.pdf) lists the goods sold under the SUNTECH design mark as:

Solar batteries; electric accumulators for vehicles; accumulator boxes; battery boxes; plates for batteries; batteries for lighting; batteries; battery chargers; galvanic batteries; electric batteries

According to the complaint (suntechcomplaint.pdf), Sun Tech Solar’s infringing activity includes use of the trademarks SUN TECH and SUN TECH SOLAR in connection with the sale of solar modules that are similar to Suntech’s products. 

In addition, Sun Tech Solar operates a web site at the address www.solarsuntech.com, which Suntech alleges is confusingly similar to its web site (www.suntech-power.com) and uses its SUNTECH mark in the domain name. 

The complaint also notes that Sun Tech Solar will be exhibiting and advertising using the allegedly infringing trademarks at the Solar Power Conference & Expo - probably the largest international solar power conference - in San Diego October 13-16. 

The complaint requests an injunction prohibiting Sun Tech Solar from using the allegedly infringing marks and asks for treble damages and punitive damages.

One interesting note on timing is that Suntech didn’t file an application for registration of its SUNTECH word mark (suntechapp.pdf) until August 29, 2008, one day after it filed the complaint. 

Surely Suntech would have preferred to have the word mark registration to assert against Sun Tech Solar, but the design mark still provides a strong case because the word portion of it would likely be deemed the dominant feature of the mark for consumer recognition purposes.

It’s possible that the timing of the suit itself was influenced by the Solar Power Conference, and indeed, Suntech has moved for a preliminary injunction (suntech_pi_motion.pdf) asking the court to shut down its rival’s booth at the expo.

Quantum Catalytics, Inc. and its Houston, Texas subsidiary Texas Syngas, Inc. (collectively ”Quantum”) sued Ze-Gen, Inc. (”Ze-Gen”) and New Bedford Waste Services, LLC (”NBW”) in federal court in Boston, Massachusetts last month for alleged infringement of 14 patents directed to gasification technology and misappropriation of trade secrets relating to the technology. 

The patents, which Quantum acquired from the bankruptcy estate of a Massachusetts company called Molten Metal Technology, include U.S. Patent Nos. 5,191,154, 5,322,547, 5,744,117 and 5,866,095. 

The patents describe methods of converting organic waste into syngas using liquid metal reactors.  The patented processes separate carbon dioxide and result in gas that can be used to generate electricity.

Quantum has taken a hardball approach in this case by seeking to expose individual executives of Ze-Gen and the company’s investors and patent attorney to infringement liability.  Thus, the complaint (quantumcatalyticscomplaint.pdf) names as individual defendants the President and Chief Technology Officer of Ze-Gen, as well as Ze-Gen’s outside patent counsel.

In addition, Quantum has accused two venture capital firms, Flagship Ventures (”Flagship”) and Vantage Point Venture Partners (”Vantage”) of contributory infringement and inducing infringement because of their alleged ownership interests and management roles in Ze-Gen. 

According to the complaint, Flagship and Vantage have control of and involvement in Ze-Gen’s allegedly infringing activities because a member of each firm sits on Ze-Gen’s Board of Directors. 

However, Quantum will have to clear a high hurdle to prove that the VCs induced infringement.  Per the Federal Circuit Court of Appeals’ DSU Medical decision, Quantum has to show that Flagship and Vantage possessed the specific intent to induce Ze-Gen’s alleged infringement of the patents-in-suit. 

That is, Quantum has to show more than just the VCs’ intent to cause the acts that it alleges are infringing.  Instead, Quantum must prove true culpability - that the VCs knew of the patents and intended to induce infringement of the patents.

It will be interesting to see how the infringement claims against Flagship and Vantage play out.  Infringement liability for clean tech VCs would be a disturbing development in clean energy financing.  In view of the ever increasing venture funding of clean technology companies, this could become a very significant case, and one the VCs should be watching.

Last month Google.org announced investment of over $10 million in geothermal technology.  Specifically, the web search company’s investment arm will give $6.25 million to Sausalito California-based geothermal company AltaRock Energy (AltaRock), $4 million to Redwood City, California drilling technology company Potter Drilling (Potter) and almost $500,000 to the Southern Methodist University Geothermal Lab (SMU) (see greentech media piece here)

Although the United States trails other countries in some renewable energy sectors such as solar, wind and biofuels, it is the world leader in geothermal energy.

The particular technology Google.org is funding is EGS, or enhanced geothermal systems, which involve drilling deep holes into hot rock in two locations and injecting water into the cracks in the first location.  Steam pressure forces the resulting super-heated water up through the holes in the second location, and that heat is used to run a turbine and produce electricity.

According to AltaRock’s web site, the company owns a portfolio of EGS patent applications and holds exclusive licenses for related intellectual property.  However, searches of the U.S. Patent & Trademark Office database for AltaRock as assignee yielded no results, and AltaRock did not respond to an e-mail inquiry about its patent portfolio.  A similar search for SMU also came up empty.

The good news for AltaRock continued this month as it reached a deal with building products and real estate firm Weyerhauser Company to develop geothermal projects in northern California, Oregon and Washington.

Potter owns a patent application directed to drilling systems and methods for geothermal heat pump applications.  U.S. Patent Application Pub. No. 2008/0093125 (’125 application) describes a method for creating more stable bore holes by making the holes non-circular.

According to the ‘125 application, elliptical, oval or eccentric shaped holes prevent portions of the rock formation from breaking apart from the bore hole wall.  Non-circular bore holes also facilitate installation of piping for heat pumps and provide improved geometry for heat exchange.

In addition to funding clean technologies, Google is developing its own.  Last month Google Inc.’s U.S. Patent Applicaton Pub. No. 2008/0209234 (’234 application) published. 

The ‘234 application describes a floating platform-mounted computer data center with an electrical generator and cooling units.  The data center of the ‘234 application gets its electricity from wave power and is cooled by the sea water upon which it floats.

In response to a final Office Action rejecting my GREEN PATENT BLOG trademark application, I recently filed a Request for Reconsideration in an attempt to keep the dream alive for GPB.  After a final Office Action, a trademark applicant can appeal the decision or file a Request for Reconsideration raising a new issue.

My Request for Reconsideration raised the new issue of acquired distinctiveness.  Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

Fortunately the trademark rules allow applicants to argue acquired distinctiveness in the alternative, so I did not have to concede that the GREEN PATENT BLOG mark is merely descriptive of the services provided.  Instead, I maintained my position that the mark is not merely descriptive and added the acquired distinctiveness argument.

Specifically, I argued that readers of Green Patent Blog have come to recognize the mark as an identifier of my blogging services.  I used both indirect evidence, such as other blog and media mentions listing me as the author of Green Patent Blog, and direct evidence consisting of e-mails from readers saying that they identify me as the source of the clean tech IP blogging services (a big thank you to all the readers who helped me in this regard!).

If the examining attorney buys my argument and supporting evidence on acquired distinctiveness, the GREEN PATENT BLOG mark will be published for opposition, and then registered if nobody opposes.  Otherwise, I’ll get another office action and have to take it from there.

Most solutions for the clean cars of the future focus on plug-in electric vehicles, fuel cells, biofuels or hydrogen.  Last month, Ford added a twist to this mix when it agreed to look at a wind turbine and generator system for motor vehicles invented by Edward Deets (see CitizensVoice.com article). 

Deets owns U.S. Patent No. 7,135,786 (’786 patent), which covers a wind-driven generator that can use wind power to charge the battery that runs an electric motor.  The ‘786 patent describes an enclosure with controllable shrouds (16) that can open and close to channel air to turbine (18).

The rotational energy of the turbine causes an alternator or generator to generate electricity, which charges the storage battery (52).  A regulator (50) prevents overcharging of the battery.

According to the CitizensVoice article, Deets, who has a pilot license, was inspired by the use of wind to run electric motors on older airplane models.

Deets and Ford aren’t the only ones exploring the possibility of tapping different renewable energy sources for cars - Sunrise Solar is making a solar-collecting sunroof that could charge a battery or power a vehicle’s air conditioner.