Green Patent Blog®

After six years of legal wrangling in U.S. courts and the International Trade Commission (ITC) over hybrid vehicle patents, Paice and Toyota recently announced that they have settled their disputes.

Although the terms of the agreement are confidential, the reports and statements of people involved reveal two interesting elements of the deal.

First, a compromise statement reported in a PR Newswire article tactfully notes Toyota’s infringement of Paice’s U.S. Patent No. 5,343,970 (’970 Patent) on the one hand and its independent development of the technology on the other hand:

The parties agree that, although certain Toyota vehicles have been found to be equivalent to a Paice patent, Toyota invented, designed and developed the Prius and Toyota’s hybrid technology independent of any inventions of [Paice founder] Dr. Severinsky and Paice as part of Toyota’s long history of innovation. 

Second, and more significantly, Toyota took a license to Paice’s entire patent portfolio.  According to this Forbes.com piece, the chair of Paice’s Board, Frances M. Keenan, said that “Toyota had agreed to license all 23 of Paice’s patents, not just the one at issue in the ITC claim.” 

The court clashes date back to a patent infringement suit filed by Paice in 2004 in which Toyota was held liable for infringing the ‘970 Patent under the doctrine of equivalents.  After being awarded an ongoing royalty of $98 per infringing vehicle, Paice turned its attention to the ITC where it could obtain an exclusion order against Toyota.

Most recently, the adminstrative law judge (ALJ) presiding over the ITC case denied Toyota’s motion for summary determination that the ITC investigation was barred by claim preclusion. 

The ALJ held that Paice was not precluded from pursuing its case in the ITC because the exclusion order was not available to Paice in the district court action and is a materially different remedy from the injunctive relief offered by the courts.

As a result of the license agreement, Paice will receive a revenue stream from Toyota for a while: the last patent under license expires in 2019.

Kruse Technology Partnership (”Kruse”) is an Anaheim, California partnership that owns several U.S. patents relating to its higher efficiency and cleaner burning diesel engines.

In previous posts (here, here and here) I discussed infringement suits in which Kruse accused DMAX, Ltd., Isuzu and General Motors of infringing U.S. Patent Nos. 5,265,562 (”‘562 patent”), 6,058,904 (”‘904 patent”) and 6,405,704 (”‘704 patent”) relating to higher efficiency and lower emission diesel engines.

Last month Kruse filed a fourth patent action against several defendants, including Daimler, Mercedes-Benz USA, Volkswagen, Ford and Chrysler.  The complaint (kruse-daimler_complaint.pdf) alleges that the defendants are infringing the Kruse patents by making and selling engines and vehicles equipped with engines that practice the patented methods.

The asserted patents are entitled “Internal combustion engine with limited temperature cycle” and are directed to Kruse’s “Limited Temperature Cycle” technology, which limits peak combustion temperatures in direct injection gas and diesel engines. 

The Limited Temperature Cycle injects fuel in multiple increments both before and after ignition.  According to Kruse’s web site, such injection of partial quantities of fuel reduces the combustion temperature, boosts thermal efficiency and reduces certain chemical emissions.

The asserted patents claim this process and describe an engine incorporating the invention.  The engine (10) comprises a block (12), a cylinder head (14) and a cylinder (16) having a piston (18). 

Fuel is supplied to the engine (10) by a fuel injection system (36).  The engine (10) also includes an air induction system (26) having an air intake valve (28) in the cylinder head (14).

One key feature of the process is the maintenance of a proper fuel/air mix in the engine to reduce the temperature and the work of compression.  According to the ‘904 patent, the fuel injection system (36) precisely regulates this fuel/air mixture for combustion and exhaust emission control.

The complaint requests that the court issue permanent injunctions against the defendants and award Kruse compensatory damages for the alleged infringement.

A previous post discussed GreenShift Corporation’s (GreenShift) volley of recent patent suits against a host of ethanol producers across the midwestern United States. 

In those lawsuits GreenShift accused various ethanol producers of infringing U.S. Patent No. 7,601,858 (’858 Patent), entitled “Method of processing ethanol byproducts and related subsystems.” 

Last month GreenShift added another infringement action to the mix when it sued an Illinois company called Adkins Energy, which runs an ethanol production facility.  The complaint (gs-adkins_complaint.pdf) was filed in the Northern District of Illinois and accuses Adkins of infringing the ‘858 Patent.

The ‘858 Patent is directed to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

According to the ‘858 Patent, whole stillage contains valuable oil but prior processes for recovering this oil have been expensive or inefficient.

GS’s patented method includes mechanically separating the whole stillage into distillers wet grains and thin stillage and then running the thin stillage into an evaporator to form a concentrated byproduct, or syrup.  The syrup is fed through a second centrifuge, which separates usable corn oil from the syrup.

This latest complaint brings the total to at least ten patent infringement actions brought by GreenShift, all involving allegations of infringing the ‘858 Patent. 

Defendants in the other cases include Cardinal Ethanol, Big River Resources Galva, Amaizing Energy Atlantic, Center Ethanol, Bushmills Ethanol, United Wisconsin Grain Producers, Blue Flint Ethanol and Iroquois Bio-Energy.

Novozymes is a Danish biopharmaceutical company that develops enzymes for a variety of applications, including for use in production of biofuels.

The ink had barely dried on the company’s newly-issued U.S. Patent No. 7,713,723 (’723 Patent) when Novozymes sued its Danish rival Danisco, along with Genencor International Wisconsin, for patent infringement.

The ‘723 Patent is entitled “Alpha amylase mutants with altered properties” and is directed to variants of certain alpha amylases that exhibit altered stability under high temperatures, low pH and other conditions.  The patented variants can be used for starch conversion in ethanol production.

According to the complaint (novozymes_complaint.pdf), filed in the Western District of Wisconsin, the defendants are infringing the ‘723 Patent by selling alpha amylase enzymes including Danisco’s GC358 product.

This is not the first time these Danish rivals have litigated a patent relating to enzymes for ethanol production.  In 2007, Danisco paid Novozymes $15.3 million to settle a lawsuit involving alleged infringement of a patent for the enzyme spezyme ethyl.

In previous posts (here, here and here) I’ve discussed GE’s wind power patent suits against its Japanese rival Mitsubishi. 

Mitsubishi struck back recently with a lawsuit of its own accusing GE of violating U.S. antitrust laws (see Mitsubishi’s press release here). 

The complaint (mitsubishi_antitrust_complaint.pdf), filed in federal court in Arkansas, alleges that GE has engaged in an anticompetitive scheme to monopolize the U.S. market for variable speed wind turbines.

According to the allegations, GE has been trying to intimidate Mitsubishi’s potential customers through “serial” baseless claims of patent infringement and public statements about Mitsubishi’s alleged infringement.

The complaint further alleges that GE’s intimidation tactics included advising Mitsubishi’s customers to take licenses to GE patents or risk infringement suits.  Sonia Williams, a Mitsubishi spokeswoman, said that GE was seeking “exorbitant licensing fees.” 

Mitsubishi claims that GE’s alleged scheme has worked as Mitsubishi’s $2 billion in annual U.S. sales of variable speed wind turbines has dropped to zero since initiation of the first patent infringement suit.

The alleged anticompetitive behavior centers on what Mitsubishi says are sham lawsuits asserting variable speed wind turbine patents that GE allegedly knew were invalid.

According to Mitsubishi, U.S. Patent No. 5,083,039 (’039 Patent), which GE acquired in 2002 from Enron’s bankruptcy estate, is invalid in view of GE’s own prior art report on work the company did in the 1980’s as part of a U.S. government funded program.

This particular prior art was not previously raised despite two investigations in the U.S. International Trade Commission (ITC) involving the ‘039 Patent.  One reason for this is that the first ITC case, between Kenetech/Zond and Enercon, was based on claim 131 of the ‘039 Patent while Mitsubishi’s invalidity assertion involves claim 121.

Mitsubishi’s complaint also questions the validity and enforceability of other patents GE has asserted, including U.S. Patent Nos. 7,321,221 (’221 Patent) and 6,921,985 (’985 Patent). 

Specifically, Mitsubishi alleges that GE withheld material prior art from the U.S. Patent and Trademark Office during prosecution of the application that issued as the ‘221 Patent and knowingly omitted an inventor from the application that issued as the ‘985 Patent. 

The same day it filed the antitrust suit, Mitsubishi also fired off a patent infringement complaint (mitsubishi_complaint.pdf) in the Middle District of Florida, accusing GE of infringing U.S. Patent No. 7,452,185, entitled “Blade-pitch-angle control device and wind power generator.”

Interestingly, this is not the first green patent war that reached a climax in an antitrust suit.  After years of global litigation between LED rivals Nichia and Seoul Semiconductor (Seoul), Seoul accused Nichia of repeatedly filing baseless patent suits to squeeze it out of the market for white side-view LEDs (see my post here).

Shortly thereafter, Nichia and Seoul announced a global settlement. 

Perhaps green patent history will repeat itself.  The two new Mitsubishi suits may increase Mitsubishi’s leverage and lead the parties to the negotiating table.