Green Patent Blog®

EcoDisc Technology AG (EcoDisc AG) is a Swiss company that has developed the EcoDisc, a thinner, lighter eco-friendly DVD.  According to EcoDisc AG, its technology provides a 52% reduction in carbon dioxide emssions compared to a standard DVD.

Specifically, the EcoDisc uses about 50% less polycarbonate (an oil derivative) and needs about 50% less energy for production.  It is 0.6 mm, about one-half the thickness of a standard DVD, which typically comprises two 0.6 mm discs epoxied together.  Also, the EcoDisc can be recycled due to the absence of toxic bonder.

Last month, EcoDisc AG sued the DVD Format/Logo Licensing Corporation (DVD FLLC) and the DVD Forum in federal court in Los Angeles, alleging that the two DVD standards organizations have acted to suppress the use of EcoDisc technology, violating antitrust and false advertising laws.

Manufacturers, or “replicators,” that want to produce DVD products using DVD FLLC specifications and the familiar DVD logo owned by DVD FLLC (pictured below) have to obtain a license to do so.

According to the complaint (ecodisc_complaint.pdf), DVD FLLC recently sent a written communication to all of its licensed replicators stating that any replicator that manufactures 0.6mm discs, including EcoDiscs, would be in breach of the DVD FLLC license agreement and could have its license terminated.

The complaint also alleges that DVD FLLC recently filed a sham lawsuit against one of EcoDisc AG’s customers.

EcoDisc AG is asking the court for injunctive relief and and an order that defendants post and disseminate corrective advertising.

Apparently, EcoDisc AG has had some recent success in combatting DVD FLLC.  According to the complaint, in April a German court issued a preliminary injunction against DVD FLLC, prohibiting the organization from stating to EU replicators that the manufacture of 0.6mm discs is in breach of the license agreement and might lead to termination of the license.

Rentech, Inc. (Rentech) is a Los Angeles company that provides clean energy solutions including biomass gasification technology and processes for converting synthetic gas (syngas) into synthetic jet fuel and diesel fuels.

Last month Rentech announced that it had completed the acquisition of Atlanta-based SilvaGas Corporation (SilvaGas) and SilvaGas’s commercial-scale biomass gasification technology, which converts urban waste feedstocks into syngas.

According to the press release, the acquisition will enable Rentech to offer integrated packages for renewable fuels and power production by combining the SilvaGas gasification technology with Rentech’s syngas conversion, conditioning and cleanup technology.

The SilvaGas patent portfolio includes several patents and pending applications relating to high-throughput gasifier technology.  The original SilvaGas process was protected by U.S. Patent No. 4,828,581 (’581 patent), entitled “Low input gas velocity high throughput biomass gasifier”.  The ‘581 patent expired in 2006.

The ‘581 patent describes a process of rapidly heating biomass with hot sand using a reactor that has a fluid bed of sand.  According to the ‘581 patent:

This invention comprises the unexpected discovery that it is possible to gasify biomass at very high wood throughputs but in an entrained gasifier operating at low inlet gas velocities.

Entrained gasifiers perform gasification reactions in a cloud of fine particles, which can be solids, atomized liquid fuels or fuel slurries.

Another key SilvaGas patent is U.S. Patent No. 6,613,111 (’111 patent), entitled “Small scale high throughput biomass gasification system and method”.  The ‘111 patent is directed to a high-throughput combination gasifier and combustor wherein the gasifier is concentrically housed within the combustor. 

The gasifier system includes a gasifier (102) and a combustor (118).  The combustor (118) acts as a source of heat to drive the gasification reactions in the gasifier (102).  The gasifier (102) and combustor (118) transfer heat and materials to each other via circulation of a particulate inert material, such as sand, which is fluidized by gas flowing through the material. 

A fluidizing gas inlet (110) provides a flow of gas into the gasifier (102), and gas exits the gasifier at exit (112), flows through a separator (114), and exits as product gas through product gas exit (116).  Biomass feedstock is introduced through the entry opening (106), and the particulate material travels from the combustor (118) into the gasifier (102) through a recirculation opening (108).

According to the ‘111 patent, the arrangement of the gasifier (102) concentrically within the combustor (102) minimizes heat loss from the surface of the gasifier and improves the efficiency of the system.  This helps to make the patented system suitable for small scale gasification having a relatively low feedstock input rate.

Most of the other SilvaGas patents and applications are directed to improvements or variations of these core technologies, including U.S. Patent No. 6,808,543 (methods for reducing ash agglomeration, reducing erosion and facilitating sand flow), U.S. Patent No. 6,680,137 (an energy system connecting a gasifier and a combustor to a fuel cell) and U.S. Application Pub. No. 2008/0022592 (a more efficient gasification system having certain diameter and height specs).

In a previous post, I wrote about a patent dispute over BOS 100, a reactant used in groundwater remediation that removes chlorine from chlorinated contaminants.  There are two lawsuits involving this technology, both pending in the U.S. District Court for the Western District of North Carolina in Charlotte. 

In the first suit, Remediation Products, Inc. (RPI), a Golden, Colorado company that makes and sells the BOS 100 product, sued Adventus Americas, Inc. (Adventus) and EnviroMetal Technologies, Inc. (ETI), requesting a declaratory judgment that the BOS 100 does not infringe U.S. Patents Nos. 5,266,213 (’213 patent) and 5,534,154 (’154 patent) and that the patents are invalid (rpi_complaint.pdf).

In the second suit, ETI, the exclusive licensee of several groundwater remediation patents including the ‘213 and ‘154 patents, along with Adventus (the sub-licensee of the patents), sued AST Environmental, Inc.  and Calgon Carbon Corp. (collectively “Defendants”), alleging infringement of six of the licensed patents.

According to the complaint (adventus_complaint.pdf), Defendants are infringing the patents by making and selling BOS 100.

Last month, RPI put out an open letter to its customers to provide an update on its lawsuit aginst Adventus and ETI.  The letter (rpi-letter-to-customers.pdf) states that RPI is also seeking a declaratory judgment of non-infringement of four patents relating to a combination of fibrous organic matter and a multi-valent metal which were asserted by Adventus and ETI.

The letter reports that the court has issued a claim construction order in the case and notes that the claim term “body of metal” was interpreted (rpi_claims_clarification.pdf) to exclude anything other than metal particles:

The Court previously construed the term “body of metal” to mean “a collection of particles of metal into an amount.”  The Court clearly did not include anything other than metal in its construction of the term.  To the extent that the term needs to be clarified, the Court finds that the body of metal does not include anything other than metal particles.  (internal citations omitted)

According to the letter, this interpretation contradicts a position taken by ETI in its 2005 Open Letter to the Remediation Industry which suggested that the use of iron “in combination with other materials” for remediation falls under the company’s “base technology.” 

Moreover, RPI believes it has a strong case on invalidity, the letter explains, because two of the prior art references it is relying on were found to invalidate the Japanese counterpart of the ‘213 patent, and those invalidity findings were upheld by the Japanese Supreme Court.

EnviroMetal Technologies, Inc. (ETI) is a Canadian company that provides processes for treating contaminated groundwater.  ETI is the exclusive licensee of several patents relating to groundwater remediation technology.

Last month ETI, along with Adventus Americas, Inc. (the sub-licensee of the patents), both part of the Adventus Group (collectively “Adventus”), sued AST Environmental, Inc.  and Calgon Carbon Corp. (collectively “Defendants”) in federal court in Charlotte, North Carolina, alleging infringement of six of the licensed patents.

According to the complaint (adventus_complaint.pdf), Defendants are infringing the patents by making and selling BOS 100, a reactant that removes the chlorine from chlorinated contaminants.

The complaint also accuses Defendants of deceiving potential Adventus customers through misrepresentations and unsubstantiated claims about the performance of BOS 100 in violation of North Carolina’s deceptive trade practices statute.

The asserted patents are directed to methods of cleaning groundwater that has been contaminated with chlorinated or halogenated organic compounds such as PCBs and pesticides. 

According to the patents, prior processes collected the pollutants from the water, which created a disposal problem.  The disclosed methods break down the pollutants in the water instead.

Some of the claimed decontamination methods include:

contacting the groundwater with an anaerobic portion of a metal to replace a chlorine ion or other halogen ion with a hydroxide ion (U.S. Patent No. 5,266,213, or ‘213 patent);

passing contaminated water through a mixture of an adsorptive material such as activated carbon and a metal to break down the contaminant (U.S. Patent No. 5,534,154, or ‘154 patent); and

promoting decomposition or degradation of halogens or other chemical contaminants in water by adding multi-valent metal particles and fibrous organic matter that supports bacterial or fungal growth (U.S. Patents Nos. 5,411,664, 5,480,579, 5,618,427 and 6,083,394).

This is not the first lawsuit involving this technology.  Remediation Products, Inc. (RPI) is a Golden, Colorado company that makes and sells the BOS 100 product and owns U.S. Trademark Registration No. 2,863,360 (bos_100_-reg.pdf) for the BOS 100 mark.  In April 2007, RPI sued Adventus and ETI in federal court in Charlotte requesting a declaratory judgment that the BOS 100 does not infringe the ‘213 and 154 patents and that the patents are invalid (rpi_complaint.pdf).

Quantum Catalytics, Inc. and its Houston, Texas subsidiary Texas Syngas, Inc. (collectively ”Quantum”) sued Ze-Gen, Inc. (”Ze-Gen”) and New Bedford Waste Services, LLC (”NBW”) in federal court in Boston, Massachusetts last month for alleged infringement of 14 patents directed to gasification technology and misappropriation of trade secrets relating to the technology. 

The patents, which Quantum acquired from the bankruptcy estate of a Massachusetts company called Molten Metal Technology, include U.S. Patent Nos. 5,191,154, 5,322,547, 5,744,117 and 5,866,095. 

The patents describe methods of converting organic waste into syngas using liquid metal reactors.  The patented processes separate carbon dioxide and result in gas that can be used to generate electricity.

Quantum has taken a hardball approach in this case by seeking to expose individual executives of Ze-Gen and the company’s investors and patent attorney to infringement liability.  Thus, the complaint (quantumcatalyticscomplaint.pdf) names as individual defendants the President and Chief Technology Officer of Ze-Gen, as well as Ze-Gen’s outside patent counsel.

In addition, Quantum has accused two venture capital firms, Flagship Ventures (”Flagship”) and Vantage Point Venture Partners (”Vantage”) of contributory infringement and inducing infringement because of their alleged ownership interests and management roles in Ze-Gen. 

According to the complaint, Flagship and Vantage have control of and involvement in Ze-Gen’s allegedly infringing activities because a member of each firm sits on Ze-Gen’s Board of Directors. 

However, Quantum will have to clear a high hurdle to prove that the VCs induced infringement.  Per the Federal Circuit Court of Appeals’ DSU Medical decision, Quantum has to show that Flagship and Vantage possessed the specific intent to induce Ze-Gen’s alleged infringement of the patents-in-suit. 

That is, Quantum has to show more than just the VCs’ intent to cause the acts that it alleges are infringing.  Instead, Quantum must prove true culpability - that the VCs knew of the patents and intended to induce infringement of the patents.

It will be interesting to see how the infringement claims against Flagship and Vantage play out.  Infringement liability for clean tech VCs would be a disturbing development in clean energy financing.  In view of the ever increasing venture funding of clean technology companies, this could become a very significant case, and one the VCs should be watching.