Green Patent Blog®

In a previous post I discussed a patent infringement suit between Palo Alto nanotechnology company Nanosys and its Manchester, U.K. rival, Nanoco Technologies (Nanoco), involving Nanoco’s quantum dot technology. 

In that suit, Nanosys alleged that Nanoco and Nanoco’s U.S. distributor, Sigma-Aldrich, were infringing U.S. Patent Nos. 6,861,155 (’155 patent), 6,322,901 (’901 patent), 7,125,605 (’605 patent, 6,821,337 (’337 patent) and 7,138,098 (’098 patent) by making and selling quantum dot technology sold under the brand name Lumidots (nanosys_complaint.pdf).

Quantum dots are nano-scale semiconductors that emit near-monochromatic light when subjected to light or electrical stimulation.  Among the many applications of quantum dots are diode lasers, LEDs and solar cells.

Last month Nanosys announced that it had reached a settlement with Nanoco.  According to the press release, Nanoco agreed to terminate its Lumidots business in the U.S. but did not admit infringement or validity of the asserted patents. 

The asserted patents include two patent families: the ‘155, ‘901 and ’605 patents are entitled ”Highly luminescent color selective nanocrystalline materials” and are directed to nanocrystal particles having a semiconductor core and a semiconductor coating that emit light in a narrow spectral range.  The core consists of cadmium sulfur, cadmium selenium or cadmium tellurium, and the coating is zinc sulfur or zinc selenium.

The ‘337 and ‘098 patents, entitled”Preparation of nanocrystallites,” are directed to nanocrystallite manufacturing methods.  The ‘337 patent describes the method as follows:

The method includes contacting a metal, M, or an M-containing salt, and a reducing agent to form an M-containing precursor, M being Cd, Zn, Mg, Hg, Al, GA, In or Tl.  The M-containing precursor is contacted with an X-donor, X being O, S, Se, Te, N, P, As, or Sb.  The mixture is then heated in the presence of an amine to form the nanocrystallite.

Kyocera recently announced that it is supplying solar modules for Toyota’s new solar ventilation system, an optional feature on the new Prius introduced in Japan last month.

The modules will be made using the company’s Reactive Ion Etching (RIE) technology, which creates microscopic ridges on the surface of the solar cell using plasma and reductive gases.  According to Kyocera’s press release, the ridges enhance output and conversion efficiency by facilitating better absorption of sunlight. 

The process also yields a “high level of aesthetic quality” and “stylish appearance” by providing a uniform dark navy blue color.

This RIE process is covered by Kyocera’s U.S. Patent No. 7,128,975 (’975 patent), entitled “Multicrystalline silicon substrate and process for roughening surface thereof.”  The ‘975 patent is directed to a multicrystalline silicon substrate and a process for roughening the substrate’s surface using an alkaline aqueous solution etching step and a dry etching step.

According to the ‘975 patent, this process overcomes the challenge of forming uniform textures in the irregular crystal orientation of multicrystalline substrates and reduces reflectance:

By this method, fine textures can be uniformly formed independent of the irregular orientation of the crystals of multicrystalline silicon. In particular, reflectance can be more effectively reduced in solar cells using multicrystalline silicon.

The ‘975 patent describes a silicon substrate (1) formed by the patented RIE process as having textures (2), or fine textures (22).  According to the ‘975 patent, the ratio of line a (connecting individual peaks of the fine textures (22)) and line b (connecting the two end points 23 and 24) is less than 1.1, which indicates that the heights of the peaks of the fine textures (22) are even.

Nanosys is a Palo Alto nanotechnology company specializing in high performance inorganic nanostructures, including quantum dots.  Quantum dots are nano-scale semiconductors that emit near-monochromatic light when subjected to light or electrical stimulation. 

Among the many applications of quantum dots are diode lasers, LEDs and solar cells, and Nanosys recently announced a new photovoltaics division called QD Soleil to focus on the solar field.

Nanosys is the exclusive licensee of several patents owned by the Massachusetts Institute of Technology relating to quantum dot technology.  These include U.S. Patent Nos. 6,861,155 (’155 patent), 6,322,901 (’901 patent), 7,125,605 (’605 patent, 6,821,337 (’337 patent) and 7,138,098 (’098 patent).

Last month, Nanosys sued its Manchester, U.K. rival, Nanoco Technologies (Nanoco), and Nanoco’s U.S. distributor, Sigma-Aldrich (Sigma), alleging that their quantum dot technology sold under the brand name Lumidots infringes these patents (nanosys_complaint.pdf).

The asserted patents include two patent families: the ‘155, ‘901 and ’605 patents are entitled ”Highly luminescent color selective nanocrystalline materials” and are directed to nanocrystal particles having a semiconductor core and a semiconductor coating that emit light in a narrow spectral range.  The core consists of cadmium sulfur, cadmium selenium or cadmium tellurium, and the coating is zinc sulfur or zinc selenium.

The ‘337 and ‘098 patents, entitled”Preparation of nanocrystallites,” are directed to nanocrystallite manufacturing methods.  The ‘337 patent describes the method as follows:

The method includes contacting a metal, M, or an M-containing salt, and a reducing agent to form an M-containing precursor, M being Cd, Zn, Mg, Hg, Al, GA, In or Tl.  The M-containing precursor is contacted with an X-donor, X being O, S, Se, Te, N, P, As, or Sb.  The mixture is then heated in the presence of an amine to form the nanocrystallite.

The lawsuit was filed in the U.S. District Court for the Western District of Wisconsin, and Nanosys is requesting compensatory damages and a permanent injunction against Nanoco and Sigma.

IP Checkups, a Berkeley based patent analytics firm, recently released a report analyzing the patent landscape for thermal energy storage technologies used in concentrating solar thermal (CST) systems.  CST systems focus sunlight using lenses, mirrors or tracking systems so the concentrated light can be used as a heat source for a conventional power plant.

The report, entitled Grid-Scale Concentrated Solar Thermal:  Thermal Energy Storage Technologies, identifies the important patents and players in the space and analyzes the level of patent protection, including patent claims assessments and key licensing agreements.

The report covers patents and published applications from 1981 to 2008 from the U.S. Patent & Trademark Office, the European Patent Office, the World Intellectual Property Organization and the Japanese Patent Office. 

The CST technologies covered are parabolic, fresnel lens, solar tower and dish engine systems, and the storage methods include molten salt, thermocline, phase-change materials, compressed steam, water, concrete, cement, rock, ammonia, carbon dioxide and graphite.

According to the report, United Technologies and its subsidiaries Hamilton-Sundstrand and Pratt & Whitney Rocketdyne enjoy the broadest patent protection for molten salt thermal storage technology, with Santa Monica based SolarReserve ready to license the technology.  Other players with significant thermal storage patents including Abengoa, Ausra, Bell Independent Power, SkyFuel, Solar Millenium and Yeda Research & Development.

Patent landscape analyses such as IP Checkups’ report can be useful for assessing the competitive landscape in a particular technology area to identify acquisition and licensing candidates and decide where to file patent applications. 

Although there are other firms out there that do patent analytics, including, for example, Sunlight Research and IPriori, when I spoke to Matt Rappaport, a co-author of the report, he told me that IP Checkups’ approach is more “patent-centric” than its competitors.  According to Mr. Rappaport, IP Checkups’ analysis is focused on the scope of patent families, the content of the patents and the breadth of the patent claims.

More information on the report can be found here, and a lightly redacted excerpt demonstrating the types of analyses used can be downloaded here.

In a previous post, I wrote about the trademark troubles of Suntech Power Holdings (”Suntech”), a Chinese solar photovolatic (PV) module provider, who has been fighting an infringing thorn in its side on three continents. 

Suntech owns U.S. Trademark Registration No. 3,111,705 (suntechreg.pdf) (”‘705 registration”) for its SUNTECH design mark (pictured above) for:

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

Suntech also has common law rights to the word mark SUNTECH in connection with solar PV modules and building integrated PV and has an application pending in the U.S. Patent & Trademark Office for the mark (suntechapp.pdf).  

Hong Kong based Shenzhen Xintian Solar Technology Co. and its subsidiary Sun Tech Solar (collectively “Sun Tech Solar”), have been using the trademarks SUN TECH and SUN TECH SOLAR in connection witht the sale of solar modules similar to Suntech’s products and operating a web site at the address www.solarsuntech.com.   

Last month Suntech announced that it had been granted a preliminary injunction (PI) in Germany.   The PI prohibits Sun Tech Solar and its distributors from selling “Suntech” brand solar products (see the earth2tech story here). 

The news release says there have been only ”isolated cases” of imitation products sold and suggests that knockoffs can be identified by closely comparing the logos and product names on the products sold with the genuine logos and names on the Suntech website.

Germany isn’t the only market where Suntech has enforced its trademark rights against fakes made by Sun Tech Solar.  As discussed previously in this space, Suntech sued its rival last year in San Diego for alleged infringement of the ‘705 registration and its unregistered SUNTECH word mark.

In that case, the court granted a preliminary injunction (suntech_pi_order.pdf) ordering Sun Tech Solar to cease all use of the SUN TECH and SUN TECH SOLAR marks as well as any other confusingly similar marks in connection with solar modules in the U.S.  The injunction order came about a week before Sun Tech Solar was to show its wares at the Solar Power International 2008 Trade Show in San Diego.

But the company thumbed its nose at the court and its rival by displaying the SUN TECH SOLAR mark on its signs and promotional material at the Trade Show anyway and refusing to cease the infringing activity even after being served with a copy of the preliminary injunction.  The court found Sun Tech Solar in civil contempt and ordered the seizure of the infringing materials (suntech_seizure_order.pdf).

That suit ultimately resulted in a default judgment and a permanent injunction against Sun Tech Solar (suntech_default_order.pdf) because of the company’s continuing infringement and refusal to even show up in court.  The default order stated:

The Defendant has made it clear that it does not intend to cease infringing Plaintiff’s trademarks and refuses to acknowledge this litigation.

Even if Sun Tech Solar had hired attorneys, they wouldn’t have had much to work with on the law or the equities considering the infringer’s outlaw behavior.