Green Patent Blog®

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.

Two companies recently qualified to use a couple of different certification marks to further their green branding efforts.  Hewlett-Packard (HP) just announced that all of its business PC, printing and server products shipped in the U.S. and Canada have qualified for the Environmental Protection Agency’s (EPA) SmartWay certification. 

In a previous post I discussed the SmartWay program, which certifies low environmental impact vehicles.  Earlier this year, all of HP’s consumer products were also SmartWay certified.  This means that now both HP’s consumer products and business products are shipped by SmartWay-certified surface transportation carriers, and the SmartWay logo will appear on HP’s product packaging.

Massachusetts packaging company Be Green Packaging (BGP) has qualified for the Cradle to Cradle certification, which signifies that a product meets certain sustainability criteria, including being wholly recyclable.  

Environmental and sustainability consulting firm McDonough Braungart Design Chemistry (MBDC) owns several certification mark applications for the Cradle to Cradle logo (shown above) and the word marks CRADLE TO CRADLE CERTIFIED and CERTIFIED CRADLE TO CRADLE.  MBDC also owns a trademark application for CRADLE TO CRADLE for paper and packaging goods.

Interestingly, MBDC’s attempts to protect similar marks as both certification marks and ordinary trademarks has created a dilemma for the company.  Under U.S. trademark law, an applicant can’t get a certification mark registration if the applicant produces or markets any of the goods or services to which the certification mark is applied. 

Accordingly, in an office action on MBDC’s application for the CRADLE TO CRADLE CERTIFIED certification mark, the U.S. Patent & Trademark Office (PTO) required that MBDC abandon its CRADLE TO CRADLE trademark application before the certification mark can be registered (cradleofficeaction.pdf).  So MBDC has to make a business decision whether federal protection is more important for its certification program or its paper and packaging brand.

In addition to using MBDC’s certification mark, BGP has filed an application to register its own BE GREEN PACKAGING trademark, and the application seems to be sailing through the PTO without a hitch.  In view of the problems faced by PNC Bank’s GREEN BRANCH application and my own GREEN PATENT BLOG application, one might have expected a rejection on the ground that the mark is merely descriptive of environmentally friendly packaging services.

Instead, although the trademark examiner stated that “green packaging” is descriptive wording, she only required that BGP disclaim any rights to those words apart from the whole mark (begreenofficeaction.pdf).  Apparently, like ”APPLE” in GREEN APPLE CLEANERS, the non-descriptive element ”BE” in BE GREEN PACKAGING allowed the mark as a whole to clear the descriptiveness hurdle.

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. 

A recent Matter Network story about a New York dry cleaning business caught my attention.  Green Apple Cleaners (Green Apple), which has two locations in Manhattan and a third in Mahwah, New Jersey, uses environmentally-friendly Solvair Cleaning Systems to launder its clients’ clothes. 

The Solvair Cleaning System is owned by Illinois textile cleaning technology company R.R. Street & Co. (RRS) and covered by a family of RRS patents directed to cleaning systems using organic cleaning solvents and a pressurized fluid solvent. 

In the process disclosed by U.S. Patent Nos. 6,355,072, 6,736,859, 6,755,871 and 7,147,670, clothes are cleaned by an organic cleaning solvent in a perforated drum contained within a cleaning vessel, and the used solvent is extracted by rotating the drum at high speed.  The process then departs from conventional cleaning methods by removing residual solvent with a pressurized fluid instead of using an evaporative hot air drying cycle.

This is made possible because the organic cleaning solvent is soluble in the pressurized liquid solvent.  The pressurized fluid solvent is then transferred from the drum, and the vessel is de-pressurized so any remaining pressurized fluid solvent evaporates.  According to the patents, the result is less damage to both the clothes and the environment.

Green Apple also owns a federal registration for the GREEN APPLE CLEANERS mark (greenapplereg.pdf).  Interestingly, Green Apple’s eco-mark sailed through the U.S. Patent & Trademark Office (PTO) in just eight months, avoiding the problems faced by other eco-marks such as GREEN BRANCH and GREEN PATENT BLOG.

Presumably, the PTO did not find GREEN APPLE CLEANERS merely descriptive of environmentally-friendly cleaning services because of the presence of the “APPLE” element in the mark.  This offers one lesson for applicants seeking federal registrations for eco-marks containing such eco-descriptive terms as GREEN or CLEAN:  add a non-descriptive, arbitrary word to your mark to spice things up and improve your chances of success in the PTO.

Parker West International, LLC (PWI) is a Santa Rosa, California company that provides environmentally-compliant industrial and commercial cleaning services.  PWI cleans nasty hydrocarbon and metallic contaminants, including oil, grease, heavy metals, diesel fuels and latex paints, using its patented “closed loop” waste treatment system (all contained in the pretty truck pictured above and shown in the drawing below). 

U.S. Patent No. 5,979,012 (’012 patent) is directed to a mobile waste treatment system including a wastewater treatment unit and a steam cleaning unit.  The system, housed in a truck or trailer, sprays steam onto a contaminated surface.  The steam condenses and emulsifies the surface contaminants, which are vacuumed up in the form of contaminated water and pumped to the steam cleaning unit on the truck and then piped to the wastewater treatment unit.  

The wastewater treatment unit churns the contaminated water with a clay-based flocculant (a chemical that cause particles suspended in solution to come out as flakes).  The sludge that separates out is deposited on a porous cloth on draining trays, and the drained water is re-used in the steam cleaning unit.  An important advantage of this system is that it provides on-site separation of solid and liquid waste, which facilitates environmentally-friendly disposal.

Last month PWI sued Clean Up America, Inc. (CUA), a Virginia-based cleaning equipment maker, in federal court in San Francisco for alleged infringement of the ‘012 patent, breach of contract, fraud and interference with business advantage.  According to the complaint (parkerwestcomplaint.pdf), in 2003 PWI granted CUA a non-exclusive license to use and sell PWI’s patented technology.  CUA was obligated to pay a royalty for such use and sale.  The agreement also gave PWI certain rights to sell its clay-based flocculants to CUA customers.

PWI alleges that CUA owes royalties on products and services it sold under the agreement and that CUA continues to sell and offer products and services that incorporate the technology of the ‘012 patent even though the agreement expired in 2006.  PWI is seeking damages and a court order enjoining CUA from engaging in infringing activity.

The fraud claim asserts, without any factual support, that CUA intentionally misrepresented its intent to pay PWI for use of the patented technology.  The federal rules of civil procedure require that a fraud claim be pleaded with particularity, so this claim could get tossed if PWI doesn’t amend its complaint to provide more detail.