Green Patent Blog

PlascoEnergy Group (Plasco), an Ottawa, Ontario waste conversion and energy generation company, will provide the first waste gasification facility in North America, Matter Network reported recently.  Gasification converts carbonaceous feedstocks, such as municipal waste, biomass or coal into a combustible gas.  The gas can be used to generate electricity or steam or as raw material for chemical or fuel production.

Plasco’s gasification facility, to be built in Ontario, will convert trash to electricity.  Plasco owns a number of patents directed to various components of its waste conversion system, and the complete facility is covered by International Application No. PCT/US2007/06840 (’840 application) (there is a U.S. counterpart to this application, but it hasn’t been published yet).

The ‘840 application describes a more efficient gasification facility that reduces the cost of the generated energy by recovering its own waste heat and using it to drive the gasification process.  The Plasco facility also performs the reactions at cooler temperatures to cut energy consumption.

A quick read of the ’840 application’s claims suggests that a key novel aspect of the technology is the horizontal orientation of the gasifier.  The gasifier includes lateral transfer units for moving the waste or feedstock material through the horizontal gasifier during processing.  A control system allows individual control of the units and enables extraction of volatile by-products at each processing stage to optimize performance and efficiency.

The Plasco Conversion System comprises two major stages - waste conversion and power generation.  In the first stage, waste is fed into the primary chamber of a converter and the material is gasified by recovered waste heat.  In the second stage, the resulting gas product is used to run turbines and generate energy.

Waste is fed into the primary chamber of a converter where it is gasified using waste heat recovered from a downstream refining chamber.  The gasified product, which typically contains carbon monoxide, hydrogen, tars and unreacted carbon, moves on to the refining chamber where it is refined by plasma torches.

Plasma is a partially ionized high temperature luminous gas, and the type of gas used can be varied to provide control over chemical reactions.  The torch heat dissociates the gas molecules to allow their recombination into smaller molecules that are more useful for energy generation.

Solid residue from the primary chamber is melted and rapidly cooled in a water bath.  According to Plasco’s web site, the resulting pellets are inert and non-hazardous, and may be used as construction aggregate for roads, concrete or other building materials.

After exiting the refining chamber, the gas then passes through the heat recovery unit, where waste heat is recovered.  Finally, the gas is cooled and cleaned of particulates, metals and acid components. 

In the power generation stage, the synthetic gas, or syngas, is used to run turbines to produce electricity, and quite a bit of it too:  according to the Matter Network story, the new plant in Ottawa will convert 400 tons of waste per day into power for about 19,000 homes. 

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. 

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.

In a previous post I wrote about Ole K. Nilssen, who played fast and loose with the U.S. Patent & Trademark Office (PTO) disclosure rules while prosecuting and maintaining some of his 200+ patents directed to compact fluorescent lighting (CFL) technology.  Nilssen’s shenanigans included incorrectly claiming the right to pay reduced fees reserved for small entities, submitting misleading affidavits, and failing to disclose to the PTO then-pending litigation with Motorola on related subject matter.

The inventor’s conduct before the PTO was later deemed inequitable conduct by the district court and the Federal Circuit Court of Appeals (Federal Circuit) (Patent rule 1.56 imposes a duty of candor on the applicant, and patent case law deems such deception and incomplete disclosure of material information during the patent application process “inequitable conduct” that renders any resulting patents unenforceable).

It turns out that Nilssen’s sloppiness before the PTO spilled over to the courtroom and has cost him about $6 million.  Last month the Federal Circuit affirmed a district court decision that Nilssen should pay Osram Sylvania, Inc.’s (Sylvania) attorney fees to cover the cost of the patent infringement suit Nilssen brought against Sylvania. 

Section 285 of the patent laws gives courts the discretion to award reasonable attorney fees to a prevailing party in “exceptional” cases.  Cases may be deemed exceptional based on a number of factors.  Here, the trial court found the case exceptional because of Nilssen’s inequitable conduct, the frivolous nature of the lawsuit, and Nilssen’s litigation misconduct. 

The litigation misconduct before the district court included waiting until very late in the proceedings to withdraw fifteen of the asserted patents from the case, belatedly producing requested documents, listing incorrect patent priority dates in responses to Sylvania’s interrogatories, and waiting until trial to announce that he was waiving the attorney-client privilege to assert reliance on advice of his tax attorney that he was eligible for the reduced small entity maintenance fees.

On appeal, the most important factor was not legal or factual, but simply the way that the appeals court reviews the district court’s findings - the “standard of review.”  The Federal Circuit must uphold a district court’s finding that a case is exceptional unless that finding is “clearly erroneous.”  Similarly, the district court’s decision to award attorney fees must be affirmed unless the lower court abused its discretion in making the award.  

These standards of review, which require the appeals court to be very deferential to the district court’s findings, ultimately sealed Nilssen’s fate.  The Federal Circuit majority stated: 

 Finally, and most importantly, the key to affirmance of the district court in this case is the standard of review - abuse of discretion.  Much is said by this court, and directed to it, concerning the importance of deferring to district court judges on matters assigned to their discretion.  In reviewing such matters, when we find them to be supported by evidence, and not unreasonable, we must, and do, respect their choices.

The Federal Circuit rejected Nilssen’s argument that the inequitable conduct was “benign,” finding no such qualitative distinction among different types of inequitable conduct.  The appeals court also rejected his contention that the various instances of litigation misconduct merely constituted vigorous litigation tactics and harmless oversight of legal formalities. 

The district court was in the best position to decide these issues because it had held a trial on inequitable conduct and had found that, in context, Nilssen’s multiplicity of transgressions amounted to litigation misconduct, and that granting attorney fees was appropriate under the circumstances.  The Federal Circuit concluded there was no clear error in the district court’s decision that the case was exceptional and no abuse of discretion in awarding attorney fees.

Interestingly, Judge Pauline Newman dissented from the majority opinion, stating that precedent compelled the appeals court to examine the egregiousness of the inequitable conduct in reviewing an award of attorney fees.  She noted that, under Federal Circuit precedent not all inequitable conduct warrants such a finding, so there must be a distinction among different types or levels of inequitable conduct:

The panel majority departs from precedent in holding that the nature of ‘inequitable conduct’ is not a factor to be weighed in the attorney fee determination.  The court today enlarges the scope of ‘exceptional case’ to include less than egregious aspects of patent prosecution and litigation practice, with no evidence or charge of bad faith or prejudice . . . It is appropriate and necessary to consider the nature of the conduct, in reviewing an attorney fee award, and to limit such award to major infractions, as statute and precedent require.

But the Federal Circuit’s lesson for Nilssen is clear:  observe the rules of the game both in the PTO and the courts if you want to enforce your patents.

Earlier this month I attended the CleanTech 2008 Summit and Exhibition in Israel.  The trade show focused on renewable energy, conservation technology, and, not surprisingly given the country’s climate and neighborhood, water technologies.

One company that stood out was Hydropath Holdings Ltd. (Hydropath), a British water treatment firm who was exhibiting its technology through its Israeli marketer, Waterpath (itself a division of Pazgas, an Israeli gas company).  Hydropath’s technology cleans limescale in commercial, industrial and residential water systems without the use of chemicals by a device that attaches to pipes and generates electric fields in the water flow.  According to Hydropath’s web site, 1 mm of limescale deposition can reduce the efficiency of a residential boiler by 10%.

Limescale deposits occur when positively and negatively charged ions such as calcium carbonate and bicarbonate exceed a maximum concentration and crystalize out of solution onto pipe surfaces.  Crystallization can be either homogeneous (the initial “seed” crystals are formed by oppositely charged ions of the dissolved substance) or heterogeneous (the initial seed crystals are formed by ions on an alien substance such as a pipe surface).  This latter type of crystallization leads to scale deposition on pipes.  Homogeneuously-formed crystals, on the other hand, are carried through the pipe without impeding water flow.

Hydropath owns several patents and applications in the U.S. and abroad, including U.S. Patent No. 5,667,677 (677 patent) and two applications, International Pub. Nos. WO 2007/045824 (’824 application) and WO 2008/017849 (’849 application).  As described in the ‘849 application, the electric field produced by Hydropath’s device orients the molecules so all of the positively charged ions are aligned and traveling in one direction, and all the negatively charged ions are aligned and traveling in the opposite direction.  This increases the odds of collision between particles of opposite charge, and leads to increased growth of the benign homogeneous crystal clusters.  It also decreases the saturation level of the solution, so existing limescale deposits can re-enter solution and flow out.

The ‘824 application discloses using the electric field to provide a more energy efficient desalination process.  The electric current causes water to re-orient into a thin layer of molecules with positive poles on one side and the negative poles on the other side.  This “hydration” layer excludes other molecules and contains substantially pure water, which can be extracted using less energy than other desalination methods.

Hydropath’s patented technology has many applications, including boilers, heat exchangers, swimming pools and fuel pipes, and according to the company’s web site, can be used to combat bacteria, algae and other substances in addition to limescale.