Green Patent Blog®

In a previous post, I discussed the complaint filed by hybrid drivetrain technology company Paice LLC (Paice) against Toyota in the U.S. International Trade Commission (ITC). 

In the complaint (paice_itc_complaint.pdf), Paice alleged that Toyota’s importation of the third generation Prius, the Camry Hybrid, the Lexus HS250h and RX450h (Accused Products) infringe U.S. Patent No. 5,343,970 (’970 Patent).

Earlier this month the ITC issued a Notice of Investigation announcing its decision to conduct an investigation into Paice’s allegations.

In a prior case in the Eastern District of Texas Paice won a jury verdict that the second generation Prius, the Highlander and the Lexus RX 400h infringed two claims of the ‘970 Patent under the doctrine of equivalents, and the verdict was affirmed on appeal (see my previous post about the verdict and appeal here). 

The court awarded Paice an ongoing royalty of $25 per infringing vehicle, which was later increased to $98.

In this ITC action, Paice asserts that Toyota is precluded from challenging the infringement, validity and enforceability of the ‘970 Patent because those issues were previously adjudicated. 

Paice also contends that the Accused Products infringe the ‘970 Patent because of alleged judicial admissions by Toyota that the drivetrains of the Accused Products are materially the same as those that were found to infringe the ‘970 Patent.

According to Paice, that leaves only issues relating to “domestic industry,” i.e., whether Paice has significantly invested in the patented technology in the U.S.  

This issue could be dispositive here.  Although licensing activity can suffice for domestic industry, it remains to be seen whether Paice’s court-imposed royalty arrangement with Toyota will be enough to meet this requirement.

The Green Building Initiative (GBI) is a Portland, Oregon non-profit that promotes green building practices.  GBI offers an assessment protocol and rating system for environmentally friendly building design under the GREEN GLOBES mark.

GBI is the exclusive licensee of the GREEN GLOBES mark and owns two U.S. Service Mark Registrations for the mark - U.S. Registration No. 3,549,714 for the GREEN GLOBES design (714_reg.pdf) (shown above) and U.S. Registration No. 3,549,715 for the word mark (715_reg.pdf).  Both registrations are for the following services in Class 42:

Providing temporary use of online non-downloadable software for evaluating, rating, comparing, certifying, and/or improving the efficiency, sustainability, and environmental performance of both new and existing buildings 

Earlier this month, GBI sued Green Globe International (GGI) in federal court in Oregon, alleging that GGI is infringing its GREEN GLOBES marks by using the mark GREEN GLOBE in connection with a certification system for environmentally friendly building design and construction.

According to the complaint (gbi-complaint.pdf), GBI has been using its GREEN GLOBES mark since at least as early as February 1, 2005.  However, GGI’s web site states that the company’s Green Globe brand (logo shown below) and program were launched in 1992.  A quick search of the U.S. Patent and Trademark Office database yields no registrations for GGI.

GBI’s complaint requests damages and injunctive relief.

Thanks to Augie Rakow for his post on the Cleantech Litigation Report, where I initially read about this case.

Aquamarine Power is a Scottish wave energy developer that recently completed a first round of fundraising (10 million British pounds) and deployed a full scale demonstration model of its Oyster wave energy converter.

International Application No. PCT/GB2006/000906 and the corresponding U.S. Patent Application Pub. No. 2008/0191485 (’485 Application) describe the Oyster.

The ‘485 Application is directed to a wave energy conversion device (1) comprising a base portion (2) anchored to the seabed (4).  A flap (8) is pivotally connected to the base portion (2) and moves back and forth in an oscillating motion in response to waves (7).

Deflector plates (13, 70) direct waves onto the flap (8), thereby improving power capture.  According to the ‘485 Application, curved end sections (78) also improve power capture. 

When the flap (8) oscillates in response to wave action, driving rods (66) cause hydraulic fluid in cylinders (68) to be pressurized by the action of pistons (not shown).  The pressurized fluid is delivered to on onshore turbine that generates electricity.

According to this Matter Network story Aquamarine Power has an agreement with Scottish and Southern Energy to develop up to 1,000 megwatts of marine energy sites by 2020 using the Oyster technology.

The Griffith Hack law firm in Australia recently published a report that analyzes hybrid car patent filings and how those filings affect innovation and success in the hybrid car market.

The report, entitled “Who holds the power? Lessons from hybrid car innovation for clean technologies”, was written by Justin Blows and Mike Lloyd, both members of the firm’s Clean & Sustainable Technologies Group.

Dr. Blows and his colleague used patent analytics tools to compile a list of all hybrid car patents filed internationally since 1980, group those patents into families, and rate the quality or “dominance” of those patents. 

Their analysis found that Toyota is the world leader in hybrid car patent families with 43% of the total, or more than 4,000 families. 

Interestingly, the study also found that a small U.S. hybrid drivetrain developer called Paice, which has been aggressively litigating its patents against Toyota with some success, holds four of the ten most dominant patents.

The implications of Toyota’s patent dominance is discussed at length in the report.  Dr. Blows’s blog post summarizes as follows:

the market leader in hybrid technology has filed so many patents ahead of its rivals, that other major manufacturers are now being forced to use the technology ‘under license’ or develop very different types of vehicles

According to the report, there is an apparent correlation between the number of hybrid cars sold by Toyota and the number of patents filed.

Moreover, and perhaps most important, the report posits that Toyota’s agressive patent filings have helped the automaker build its hybrid brand and set “the standard for the hybrid power train” by creating early and lasting exclusivity in its vehicles’ dual-mode capability, i.e., the ability to drive using one or both of an electric motor and a conventional motor.

More broadly, in his comments about the report, Dr. Blows echoes Green Patent Blog’s raison d’etre:

“Our report shows that clean technology innovators are massively investing in IP, to ensure they remain competitive as the world moves into a new age of clean technology.”

I’ve written before in this space about retired Columbia University Professor and LED innovator Gertrude Neumark Rothschild and her success litigating and licensing her patents (see, e.g., previous post here).  That success continues as four more defendants targeted by Rothschild in the U.S. International Trade Commission (ITC) settled recently.

The biggest name is Sony Ericsson Mobile Communications (Sony), whose settlement with Rothschild was given final approval by the ITC in August when the commission decided not to review an administrative law judge’s (ALJ) inital determination terminating the investigation with respect to Sony.

Also, in an initial determination (ID) made public last month, an ALJ granted motions by Tyntek Corp., Tekcore Corp. and Arima Optoelectronics seeking orders terminating the ITC investigations into their allegedly infringing products (Tyntek ID, Tekcore ID, Arima ID).

The settlements come in two consolidated ITC actions in which Rothschild alleged that about three dozen LED and consumer electronics makers infringe U.S. Patent No. 5,252,499 (’499 patent), which relates to methods of making LEDs capable of emitting shorter wavelength light (see previous posts on these actions here and here).

The ‘499 patent is directed to methods of doping semiconductors, which means adding impurities to increase the number of free charge carriers.  Rothschild’s patented technology has had a major impact on LEDs by making production of green, blue and other short wavelength LEDs more economically viable.