While I have no data on the subject, I’ve noticed that the most commonly-litigated clean tech patents seem to be those directed to lighting products, particularly LEDs.  I’m not sure if this is true, or if true, why it is so.  Their ubiquity may be one reason:  LEDs are used by the billions in a wide array of applications from instrument panels to traffic lights to cell phones as an energy-efficient substitute for incandescent bulbs, so there are plenty of products to accuse of infringement.  Any other thoughts on this from readers would be appreciated.

In a previous post, I wrote about two oft-litigated LED patents owned by retired Columbia Professor Gertrude Neumark Rothschild, who has decided to spend her golden years litigating.  Ms. Rothschild settled one lawsuit with Philips Lumileds earlier this year, but asserted one of her patents again at the U.S. International Trade Commission (ITC).   The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337.  It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

Ms. Rothschild filed a complaint with the ITC in February alleging infringement of U.S. Patent No. 5,252,499, and the agency announced in late March that it would investigate whether the patent is infringed.  The Notice of Investigation lists more than 25 respondents, including electronics giants such as Hitachi, LG Electronics, Matsushita, Motorola, Nokia, Samsung, Sony and Toshiba.  In late April, the ITC issued an order setting a 17-month investigation period with a target completion date of August 25, 2009.  So they’re off, and it will be interesting to see if any of the respondents are in it to win it, or whether they will settle and take licenses.

 

The Dechert law firm’s annual report on trends in trademarks (which I accessed through this post on Greenbiz) came out in April, and its top story was the explosion of eco-mark applications received by the U.S. Patent & Trademark Office in 2007. 

Among the report’s findings is that the number of marks including the word GREEN more than doubled from 1,100 in 2006 to 2,400 in 2007.  The phrase GO GREEN appeared in over 100 different proposed marks.  The word CLEAN was used in over 900 applications, and GREEN and CLEAN appeared together in 74 marks.  Over 50 different marks paired CLEAN with either FUEL, ENERGY or POWER. 

The report also noted that marks including the prefix ECO more than doubled to almost 900.  ENVIRONMENT appeared in more than 450 marks, and ENERGY was used in almost 1200 marks.  The report is an interesting read, and the narrative on the ECO-products and services available to consumers is both hilarious and mind-boggling.  (see my previous posts on eco-marks here)

 

A previous post discussed a court decision upholding a jury verdict that Toyota’s Prius, Highlander SUV and LexusRX400h infringed a patent owned by Paice, a company that owns several patents relating to hybrid drive train technology.  Toyota has filed a writ of certiorari, asking the U.S. Supreme Court to take the case and reverse the lower court decisions that it is liable for patent infringement.

The key issue on appeal is whether statements in Paice’s patent criticizing previous hybrid technology – a system that Toyota now uses in its hybrid vehicles – should preclude a finding that Toyota’s use of one key aspect of the criticized technology infringes the patent as an equivalent system.  U.S. Patent No. 5,343,970 (‘970 patent) is directed to a hybrid drive train that uses a microprocessor and a controllable torque transfer unit that accepts torque input from both an internal combustion engine and an electric motor.  A bevel gear assembly regulates torque input, and the Paice patent criticizes expired Berman patents that used an alternative “planetary” gear system to regulate torque input, calling them “complex” and “difficult to manufacture economically.”  Significantly, Toyota uses this planetary design in its vehicles.  A clear and unequivocal disavowal of the planetary system would prevent Paice from asserting that someone using that system infringed the ‘970 patent under the doctrine of equivalents because a patentee cannot state that particular components are not part its patent and later assert that those same components infringe the patent.

The U.S. Court of Appeals for the Federal Circuit found that Paice’s statements were not a clear disavowal of a planetary gear system because it was not obvious which portion of the Berman drive train (motors, engine, gear system or control system) was being criticized.  The court said that the patentee must have “clearly excluded” the specific subject matter that is later sought to be recaptured under the doctrine of equivalents for this type of estoppel to apply. 

In its petition to the Supreme Court, Toyota argues that this “clearly excludes” language constitutes a new, heightened standard and creates a “reverse presumption” that rewards vague patent drafting and destroys the notice function of patents.  Toyota contends that a person of ordinary skill in the art would recognize that Paice disavowed the planetary gear system.  Paice argues in its opposition brief that Toyota simply failed to meet its burden of proving that the statements in its patent clearly disclaimed the gear system component and points out that the language at issue does not mention the gear system.  Paice also disputes the contention that any new standard or presumption was created, and asserts that the Federal Circuit followed the established standard for proving a disavowal based on statements in a patent.

The odds are very slim that the Supremes will hear this case.  The Court takes only a tiny percentage of the cases it is asked to hear, and it has heard several high-profile patent cases in the last couple of years. Also as Paice pointed out in it brief, there are no inter- or intra-court disputes, academic discussions, or legislative activity on this issue.