Green Patent Blog®

OriginOil, Inc. (OriginOil) is a Los Angeles company developing a full range of technologies to improve the processes of algae growth and oil extraction.  OriginOil’s methods may substantially reduce the amount of energy necessary to extract oil from algae (see the Matter Network story here).

Unlike some algae biodiesel companies who only focus on the extraction step, OriginOil’s innovations span a much broader approach.  The company’s suite of technologies is covered by several pending patent applications, which “apply to the whole life cycle of algae production, not just extraction” according to OriginOil’s President and CEO Riggs Eckelberry. 

OriginOil’s U.S. Patent Application Pub. No. 2009/0029445 (’445 application), is entitled “Algae growth system for oil production” and is directed to systems for growth and processing of microorganisms such as micro-algae. 

The systems attempt to duplicate the optimum natural growth promoting environment for algae, including thorough exposure to carbon dioxide, growth promoting admixtures, exposure to light and extraction.

The key to this Quantum Fracturing process is breaking down water, carbon dioxide and other nutrients into micron-sized bubbles.  The increased surface area of these bubbles facilitates high absorption of carbon dioxide and nutrients by micro-algae during the growth phase.

Several as yet unpublished patent applications are directed to other aspects of OriginOil’s algae technology, including:

an application filed in 2008 directed to the Helix Bioreactor, which optimizes delivery of light to algae by providing light at closely spaced intervals within a photobioreactor;

an application filed in 2008 directed to the company’s Modular and Scalable Growth System, which facilitates large scale algae production through stacking of multiple Helix Bioreactors into an integrated network; and

an application filed this year directed to a Single-step Extraction Process, which combines Quantum Fracturing with electromagnetics and pH modification to break down cell walls and extract oil in one step.

OriginOil recently announced the filing of an international or PCT patent application, which Mr. Eckelberry said combines several of the company’s technologies and is now its consolidated “lead application” going forward. 

With this holistic approach, Eckelberry said OriginOil’s business model is to help other companies make algae and provide full support for its customers producing the oil.  The company’s new partnerships include one with Desmet Ballestra and one with the U.S. Department of Energy’s Idaho National Laboratory, wherein the latter will team with OriginOil on algae scalability issues.

Philips Lumileds Lighting Co. (Lumileds) and Taiwanese LED maker Epistar Corp. (Epistar) have a history of litigation involving Lumileds’ U.S. Patent No. 5,008,718 (’718 patent).

The ‘718 patent is entitled “Light-emitting diode with an electrically conductive window” and is directed to an LED with a transparent window layer on top of the active semiconductor layers.

The transparent window layer (24) overlays the LED’s active p-n junction layers (21, 22, 23) of AlGaInP.  The transparent window layer (24) is made of a different semiconductor than the active layers, with a low resistivity and a bandgap greater than the active layers.

As a result, the window layer (24) is transparent to light emitted by the p-n junction layers and therefore generates more uniform light emission and improves the efficiency of the LED.

In 2005 Lumileds filed suit against Epistar and United Epitaxy Company (UEC) in the U.S. International Trade Commission (ITC) alleging infringement of the ‘718 patent.  Later that year, UEC merged into Epistar and ceased to exist as a separate entity.

Epistar has continued to manufacture certain UEC LED products, as well as its own AlGaInP LEDs.

Prior to the merger, back in 2001, UEC had settled another lawsuit with Lumileds involving the ‘718 patent, and the settlment agreement provided that UEC and its successors could not challenge the validity of the patent.

A third lawsuit between Lumileds and Epistar in 2003-04 also ended with a settlement agreement.  Under that agreement, Epistar took a license to make particular LEDs, and with respect to those products, promised not to challenge the validity of the ‘718 patent. 

The agreement was silent with respect to non-licensed products, preserving Epistar’s right to challenge the ‘718 patent’s validity if Lumileds were to sue Epistar for infringement of other products in the future.

In the ITC case Lumileds moved for a summary determination that Epistar could not challenge the validity of the ‘718 patent and argued that the merger with UEC bound Epistar to the UEC settlement agreement, which prohibited such a challenge.  

An ITC administrative law judge (ALJ) granted the motion, ruling that the UEC-Lumileds agreement precluded Epistar from contesting the validity of the ‘718 patent with respect to any UEC or Epistar product.

Although the ALJ later acknowledged there were two separate settlement agreements at issue, by that time the ALJ found it was procedurally too late to change his ruling.

Epistar was subsequently found liable for infringement of the ‘718 patent, and the ITC issued a limited exclusion order excluding from entry into the U.S. Epistar’s infringing LED products.  The exclusion order included downstream packaged LEDs containing the infringing LEDs regardless of the manufacturer or importer of these products.

Epistar appealed to the U.S. Court of Appeals for the Federal Circuit.  Last month, the Federal Circuit reversed the ITC rulings on the validity preclusion and the exclusion order.

The Federal Circuit discussed the two separate settlement agreements of UEC and Epistar and held that, with respect to its own products, Epistar could challenge the validity of the ‘718 patent:

This court finds that Epistar’s right to contest validity of the ‘718 patent with respect to its products is governed by its own separate agreement with Lumileds. . . .When Lumileds settled with Epistar, the settlement agreement addressed only the licensed products and thereby preserved Epistar’s unrestricted right to contest the validity of the patent in other contexts.  This court cannot allow Lumileds to escape its agreements due to a merger that does not disturb its contract with Epistar.

Epistar could be precluded from challenging validity only as to the UEC products:

Epistar (as successor to UEC) may not contest the validity of the ‘718 patent with respect to the UEC products that it inherited in the merger.

The Federal Circuit also vacated the exclusion order and instructed the ITC to reconsider the order based on recent precedent holding that the ITC lacks statutory authority to exclude imported products by entities not named as respondents before the ITC. 

The court found that Epistar does not itself manufacture downstream products; instead other foreign entities incorporate the infringing LEDs in packaged LEDs and LED boards for importation into the U.S.

Metabolix is a Massachusetts biotech company that makes alternatives to petrochemical-based plastics. 

Metabolix’s bioplastic technology includes polymers known as polyhydroxyalkanoates (PHA) and enzymes that make these polymers.

According to this Seeking Alpha article, PHA are “linear polyesters produced in nature by bacterial fermentation of sugar and lipids.”  In other words, PHA are made by microoorganisms through photosynthesis.

CleanTechnica reports that Metabolix is working with the Strategic Environmental Research and Development Program to develop its bioplastic for military use in food packaging.

The company also formed a joint venture with Archer Daniels Midland called Telles to market its bioplastic, which it sells under the brand name Mirel.

Some of Metabolix’s key patents and applications include U.S. Patent Nos. 6,620,869 (’869 patent), 7,202,064 (’064 patent), 7,208,535 (’535 patent) and U.S. Patent Application Pub. No. 2008/0275208 (’208 application), which are directed to PHA biopolymer compositions.

These inventions include improved thin film formation through PHA pellet compositions (’869 patent and ‘535 patent) and methods of making PHA compositions that can be readily extended to incorporate additional monomers by mutagenesis or genetic engineering of PHA-producing microorganisms (’064 patent and ‘208 application).

Metabolix recently announced that its Mirel bioplastic resins have received the OK Compost Home certification (provided by Belgian inspection and certification firm Vincotte), which means that the materials will biodegrade in home composting systems of varying temperatures. 

Its materials previously received the OK Compost certification for industrial composting.  (read about the Vincotte OK Compost certifications: vincotte_cb_05.pdf) 

Unfortunately, Mirel bioplastics are not yet cost competitive with plastics made from petroleum (Mirel sells at $1.50 per pound versus 70 cents per pound for traditional plastics), but the company believes that many customers will pay a premium for its cleanly made, compostable materials, especially in the disposable plastics market.