Green Patent Blog®

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).

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.

Earlier this month, Sprite Industries sued Culligan in the Central District of California for infringement of a patent on a shower filtration device.  The patent covers a combination showerhead and water filter held together in a single housing.  The housing has top and bottom mating halves that are either screwed together or threaded together, a water filter assembly secured in the housing and a baffle to direct the water flow through the filter.  The patented device reduces potential head bumps to the bather because it takes up less shower space than prior art devices, which typically required that a separate shower head be attached to a filter outlet.  The accused device is Culligan’s wall-mount filtered showerhead.  

Section 120 of the patent laws allows a patent applicant to file “continuation” applications from a previously filed “parent” application.  Each continuation in a patent “family” is entitled to the same filing date as the original application as long as the continuations specifically reference the prior applications in the family and disclose all of the same material.  Establishing a continuous chain of priority to an early filing date can be critical to preserving the “novelty” of an invention because, if the chain is broken, intervening prior art can render a “child” or “grandchild” patent invalid as “anticipated” (i.e., not novel).  A broken chain can also transform one’s own “grandparent” or parent application into prior art that could invalidate subsequent related patents or applications.

Through continuation practice, Zenon obtained a family of patents directed to water treatment and filtration systems.  Zenon sued U.S. Filter, alleging infringement of its grandchild patent.  The invention of the grandchild patent consists of two critical elements - a vertical skein and a gas distribution system.  The skein includes porous or semipermeable fibers potted in a solid resin and a collection means to collect permeate from the ends of the fibers.  The skein is submerged in water, the water flows into the fiber array, and the permeate is collected from the ends of the fibers.  For the process to work effectively, the surface of the fibers must be kept free of particulate matter to ensure the free flow of permeate over an extended period of time.  The gas distribution system generates a cleansing gas, and the resulting gas bubbles keep the fibers clean by scrubbing them and causing them to scrub against each other.

Both the grandparent and the grandchild patents disclosed the skein and the same type of gas distribution system.  However, the intervening child patent disclosed a different gas distribution system and incorporated by reference “relevant disclosures” only relating to the skein.  Because the child did not actually disclose the original gas distribution system and failed to incorporate by reference either the entire grandparent application or the original gas distribution system, the U.S. Court of Appeals for the Federal Circuit held that Zenon had lost its continuous chain of priority to the grandparent application.  The chain was broken by the deficient disclosure of the intervening child patent, and the grandparent patent was transformed into prior art that invalidated the grandchild.

Zenon’s “continuing” problems could have been avoided by doing one of two things: simply copying and pasting the entire disclosure of the grandparent application into the intervening child application, or expressly incorporating by reference the entire grandparent application in the child application.