Archive for July, 2008

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Rothschild’s Preamble Gamble

July 30th, 2008


The claims are the legally operative part of a patent for infringement purposes.  That is, if an accused device contains all of the literal elements of a patent claim or equivalents thereof, the device infringes that claim.  Patent claims have two parts:  the preamble (e.g., “a seating apparatus comprising:”) and the body (e.g., “a plurality of legs; a seat; and a back”). 

Usually an infringement analysis involves only the elements in the body of a claim.  But sometimes, depending on the relationship between the preamble and the body, the terms in the claim preamble are considered in infringement.  Whether elements in a preamble should be part of the infringement analysis can be a hotly contested, and dispositive, question in patent litigation.

That was the case in a currently pending lawsuit in New York federal court between retired professor and LED innovator Gertrude Neumark Rothschild and Durham, North Carolina LED maker Cree, Inc. (Cree).  In a recent decision (opinion.pdf), Judge William C. Conner denied Cree’s motion for summary judgment that it did not infringe one of Rothschild’s patents because the court determined that the preamble of an asserted patent claim should not be part of the infringement analysis.

In 2005, Rothschild sued Cree for patent infringement, alleging that its methods of producing gallium nitride and aluminum gallium nitride LEDs infringed two of her patents.  U.S. Patent Nos. 4,904,618 (‘618 patent) and 5,252,499 (‘499 patent) are directed to methods of making LEDs capable of emitting short wavelength (green or blue) light. 

The patents address the problem of “doping” wide band gap semiconductor materials, an essential step in creating adequate conductance for the materials to function as LEDs.  Doping means adding impurities to a semiconductor to increase the number of free charge carriers. 

The preamble of claim 10, the only asserted independent claim of the ‘499 patent, claimed a “method of forming a low resistivity semiconductor from a wide-gap semiconductor substrate that has a tendency to become compensated when it is doped, comprising…”  Cree tried to dispose of the ‘499 patent by a summary judgment motion in which it argued that this preamble should be part of the infringement analysis, and that its accused production process does not infringe the patent because it does not include the elements of the preamble.

Cree also contended that Rothschild waived her right to raise the issue of excluding the preamble from the infringement analysis because she failed to make that argument earlier in the case, and, in particular, remained silent about it during the court’s claim construction proceedings (Rothschild even offered constructions for terms appearing only in the preamble).  The court disagreed, noting a lack of precedent on such waivers and that depriving Rothschild of the argument would cause her substantial prejudice, likely destroying her infringement claim against Cree.

Generally, a claim’s preamble becomes part of the infringement analysis (i.e., the preamble is “limiting”) if it recites essential features of the invention.  Stated another way, if the body of the claim recites a structurally complete invention, the preamble is not necessary for a determination of infringement.

Judge Conner found that the body of claim 10 adequately describes a complete process and that reference to the preamble is not necessary to supply any missing steps or make the claim body comprehensible.  Rather, he found that the preamble merely specifies a desirable result achieved by the process recited in the body of the claim, i.e., formation of a low-resisitivity semiconductor from a wide-gap semiconductor substrate.

Accordingly, the court held that the preamble was not part of the infringement analysis.  Because Cree’s non-infringement arguments hinged on elements of the preamble, the court denied the motion for summary judgment.  Now the case will go forward to trial, or, if recent history is any guide, Cree will settle and take a license from Rothschild. 

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Prosecuting Eco-Marks Part III: PTO Maintains Descriptiveness Rejection

July 28th, 2008


I recently received a second office action (secondofficeaction.pdf) from the U.S. Patent & Trademark Office (PTO) regarding my application to register the GREEN PATENT BLOG eco-mark.  The trademark examiner rejected the application again on the same ground – that the mark is “merely descriptive” of the services offered.  The examiner re-stated his position that “GREEN” describes clean tech subjects, “PATENT” is a type of intellectual property, and “BLOG” is a generic term.

 that the mark is not merely descriptive because “GREEN” has many meanings, but the examiner rejected that argument, stating that the descriptiveness inquiry focuses on the relevant services.  That is, the fact that “GREEN” may have different meanings in other contexts does not control here because the term immediately describes Green Patent Blog’s (GPB) services of providing information on clean technology and renewable energy.

The office action included attached evidence purporting to show “green patents” used in a descriptive manner, including some GPB pages, and the examiner seemed to relish quoting my own words against me (maybe I should sign him up for free e-mail alerts!). 

Incidentally, I knew that referencing “green patents” in my posts could provide ammunition to the examiner, but decided that the importance of generating Google hits for that term outweighed the downside of compromising my trademark prosecution.

The office action was made “final,” which means I can now appeal to the Trademark Trial and Appeal Board.  Alternatively, I could file another response with the examiner.  I’m mulling my options now and will of course report on the next step in due course.

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EPA Helps Consumers Shop for Vehicles the SmartWay

July 27th, 2008


The U.S. Environmental Protection Agency’s (EPA) SmartWay program educates consumers on the environmental impact of various transportation options.  The program includes a ratings system for vehicles, information on renewable fuel options and a project to reduce emissions in the freight and transport vehicle sector.

The centerpiece of the SmartWay program is the personal vehicle ratings and certification system.  The certification system features the EPA’s Green Vehicle Guide, which scores vehicles based on air pollution and greenhouse gas emissions.  Vehicles that achieve a high enough score are SmartWay certified. (see the Greenbiz article)

A certifiable score means at least 6 out of a possible 10 for both the air pollution rating and the greenhouse gas emissions rating and that the two ratings combined add up to at least 13.  The air pollution rating is determined by how much the vehicle’s tailpipe emissions contribute to smog and health issues.  The greenhouse gas score is based on carbon dioxide, nitrous oxide and methane emissions and is tied to the fuel economy of the vehicle.

The certification program uses the SmartWay logo, and the EPA owns two eco-marks for the logo.  Both incorporate a leaf with a road running along the stem and through the center of the leaf with dashed divider lines. 

U.S. Registration No. 3,220,604 (‘604 registration) (604registration.pdf) issued in March of 2007 for a certification mark that includes the words “US EPA Certified SmartWay” alongside the leaf component (see below).  The listing of goods covers “[v]ehicles, namely automobiles and trucks.”


In July of last year, the EPA also applied to register a SmartWay service mark for educational materials and services and public awareness relating to cleaner and more efficient transportation options.  U.S. Application No. 77/225,038 (‘038 application) (038application.pdf) includes the same leaf component and the word “SmartWay” without the “US EPA Certified” language (pictured at the top of this post).

One interesting sidenote is that the EPA had a little trouble with its ‘038 application, which was rejected for being too similar to the Wisconsin Department of Transportation’s (WDOT) SmartWays trademark registration (smartwaysregistration.pdf).  The EPA overcame this problem by getting WDOT’s consent to the EPA’s use of its mark and entering into a concurrent use agreement with the state agency (responseandconsent.pdf).

In navigating the SmartWay web pages and discovering that the car I drive is SmartWay-certified, I noticed that the EPA seems to be misusing its SmartWay eco-marks.  The ‘604 registration logo (the one that includes the word “US EPA Certified”) is the certification mark, so it should be the one used to identify certified vehicles. 

However, the ‘604 registration logo is conspicuously absent from the vehicle certification sections of the EPA’s web site, which instead feature the simpler ‘038 application mark (pictured at the top of this post).  In addition, when one searches the Green Vehicle Guide, the leaf component alone appears beside the SmartWay certified vehicle listings. 

While the leaf component is arguably the key feature for consumer recognition purposes, the EPA probably should keep its SmartWay trademark house in better order and be more strict about using its certification mark for certification purposes.

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Suzanne Badawi Explores the “Global Warming Insurance Claim”

July 25th, 2008


Suzanne Badawi is a partner and insurance litigator at Luce, Forward, Hamilton & Scripps and the head of the firm’s Climate Change & Sustainable Technology practice.  Her article, “Global Warming: Are You Covered” appears in this month’s California Lawyer magazine.

The article explores whether claims made to defray the costs associated with carbon dioxide emissions will be covered by comprehensive general liability (CGL) insurance policies.  According to Badawi, the answer depends on the wording of the pollution exclusion in the policy and whether carbon dioxide is deemed a pollutant. 

Most CGL policies today have an “absolute pollution exclusion” (APE), which means they provide no coverage for the release of pollutants into the environment.  Not surprisingly, the scope of the exclusion often turns on the question of what constitutes a pollutant.  The article takes the reader through key cases that have ruled on the definition of “pollutant” and notes that the APE has not yet been addressed in the context of carbon dioxide emissions. 

Badawi speculates that the Supreme Court’s 2007 decision in Massachusetts v. EPA, which held that carbon dioxide is a pollutant subject to regulation by the EPA, provides an opening for insurers to argue that the greenhouse gas should be subject to the APE.

I’m always interested in how global warming impacts areas of the law outside of my field, and Badawi’s article is an interesting read.  With all the legal and regulatory efforts to curb greenhouse gas emissions, the article notes that emitters are looking for ways to defray related compliance and litigation costs:

And with that, the “global warming insurance claim” has arrived. 

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Cogen Sour Over Hess Power

July 24th, 2008

DG Cogen Partners, LLC (Cogen) is a California-based installer and operator of energy efficient power systems, including cogeneration systems.  Hess Microgen (Hess) designs, manufactures and sells cogeneration units, including the Hess Microgen 200 Packaged Cogeneration System (Microgen 200), which runs on engines made by Daewoo Heavy Industries America (Daewoo) (now Doosan Infracore America).

Cogeneration technology, also known as combined heat and power (CHP), uses fuel (usually natural gas) to produce electricity and, unlike traditional power systems, recycles and uses the heat released in the process.  By some estimates, if the energy lost in the form of waste heat were harnessed it could provide one-fifth of the country’s energy needs.

Earlier this month, Cogen sued Hess, Daewoo, Doosan Infracore America and Advanced Power Distributors (APD) in federal court in San Francisco for damages Cogen allegedly suffered due to a fleet of faulty cogeneration units.  The complaint (cogencomplaint.pdf) alleges, among other things, false advertising, unfair competition, breach of contract, breach of warranty and fraud.

In 2004, Cogen purchased a fleet of Hess cogeneration units, including Microgen 200s, from a third party, becoming the assignee of the third party’s purchase agreement with Hess.   According to the complaint, Hess agreed to provide long-term maintenance for the units as required. 

Cogen alleges that, prior to and at the time of its purchase, Hess misrepresented the capabilities of the cogeneration units through statements, technical documents and advertising and failed to disclose flaws in the products.  In particular, Cogen says Hess stated that the units contained “rich burn” engines that generated high thermal output when the engines were actually “lean burn,” which provide lower output and require more steps to meet regulatory compliance.

The complaint further alleges that the units subsequently failed completely or did not generate electricity at the rated capacity.  After repeated notifications and requests for Hess to remedy the problems, instead of repairing or replacing the units, Hess recommended that Cogen contact Daewoo to replace the engines.  Daewoo, through its distributor APD, retrofitted the cogeneration units with new engine heads, but Cogen alleges that the replacements did not correct the operational problems.

Cogen has asked for damages to compensate for its lost revenue, the purchase price of the units and retrofit parts, the cost of service and maintenance and other business losses. 

If the allegations in Cogen’s complaint are true, it would be a shame.  Energy efficiency technology, particularly recycling waste heat by congeneration, is too important to be compromised by false claims, faulty equipment and shoddy service.

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Green Energy Resources Offers Certified Wood and Carbon Credits

July 22nd, 2008


Green Energy Resources (GER) provides wood fiber fuels, including wood chips, sawdust and biomass for various applications, including power production and for raw materials for cellulosic ethanol production.  GER’s wood products comply with the Kyoto Protocol and meet all European Union regulatory requirements, so they can be used in the EU as well as the U.S.

GER made news recently when it began offering carbon offset credits to its customers.  These allow companies that operate in markets that have carbon caps to offset any shortfalls in their carbon emissions.

According to the company’s web site, GER’s products are certified with the UTCS eco-mark.  UTCS is an acronym for Urban Tree Certification System.  A recent Reuters article states that GER developed the UTCS certification and describes it this way:

UTCS (urban tree certification system) is a NYS and internationally recognized urban forest management plan developed by GER CEO Joseph Murray.  UTCS certification system is a socially responsible and environmentally friendly methodology to recycle government approved forestry and non-forest industry generated waste wood.  UTCS includes chain of custody documentation (a tracking system from origin to end user) and 3rd party verifications of sourcing.

So GER certifies its own products, which is quite unusual.  I haven’t been able to find any independent verification of the UTCS certification mark, and the description from the Reuters article quoted above is from the “About Green Energy Resources” text which was probably taken from GER’s marketing materials.

A search of the U.S. Patent & Trademark Office’s trademark database reveals that GER has not filed a trademark or certification mark application for UTCS.  Indeed, UTCS wouldn’t be eligible for federal certification mark registration because a certification mark is used not by its owner, but by others whose products or services are certified by the owner of the mark.

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Providing “Lynx” Between Green Inventors and Green Investors

July 20th, 2008

lynxstreet.JPG is a new  web site that serves as an online intellectual property (IP) exchange for environmentally-friendly technology.  The site provides a “virtual trading floor” that links inventors with investors, venture capitalists, governments and others who can provide the resources to commercialize and implement green ideas and technology.  (see the LynxStreet page on Squidoo)

The site is divided into three trading floors:  patents, patents pending and “conceptual,” where inventors can offer their ideas for sale or license.  A prospective buyer can browse such categories as air quality, greenhouse gas reduction, radioactive contamination and waste reduction & recycling.  The site even has want ads so people searching for specific green IP can post their particular needs. 

A one-year membership costs about $50 for either a patent buyer or a patent seller.  LynxStreet charges a $1,090 flate fee for a successful licensing agreement and takes a commission on any successful sale starting at 10% for a sale of up to $1,000 and diminishing as the sale value increases.

LynxStreet’s success may depend on the network effect, i.e., the site will be useful to people only if enough other people use it.  Assuming it does take off, with LynxStreet and the launch of the Eco-Patent Commons (Commons) earlier this year, patent owners now have the tools to either sell their clean technology or donate it while those seeking green ideas can either browse the free green IP through the Commons or search the pay-to-play listings on LynxStreet.  It will be interesting to see which model proves better at implementing clean technology.

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Paice Targets Toyota Again with New Hybrid Vehicle Patent

July 18th, 2008


The ink had barely dried on Paice LLC‘s (Paice) new hybrid vehicle patent when the Florida-based hybrid technology company once again accused Toyota of infringement.  U.S. Patent No. 7,392,871 (‘871 patent) issued on July 1st, and Paice filed suit the same day in federal court in Marshall, Texas.

The bare bones complaint (paicecomplaint.pdf) alleges that Toyota directly infringes the ‘871 patent by making and selling the Highlander hybrid SUV and the Lexus RX400h hybrid SUV and that the carmaker induces and contributes to infringement by encouraging others to operate the vehicles.  The complaint asks the court for an injunction, compensatory damages, treble damages for willful infringement and an award of attorney fees.

The ‘871 patent is the latest in a family of patents that cover improvements upon Paice’s U.S. Patent No. 5,343,970 (‘970 patent).  The ‘871 patent claims a hybrid vehicle having three AC electric motors each with an AC-DC converter. 

The patent explains that providing three motors (one is a starting motor, the other two are traction motors) conveys mechanical and efficiency advantages such as eliminating the need for a fore-and-aft driveshaft and allowing traction control to be centrally accomplished by a microprocessor.


Paice’s assertion of the ‘871 patent opens a new front in a series of battles with Toyota.  Two prior lawsuits involved the ‘970 patent.

In one of those suits, the Prius and other Toyota hybrids were found to infringe and Paice was awarded $4.3 million in damages.  (see my previous posts on that case here, here and here).  Toyota tried to appeal all the way to the Supreme Court, but the Supremes refused to hear the case.  Another suit, also in the Eastern District of Texas, is pending.

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Georgia Decision on Coal Plant Could Boost Carbon Capture Market

July 16th, 2008


I depart from intellectual property issues today to report on a significant environmental law decision out of Georgia that could have major implications for the carbon capture and sequestration market. 

On June 30th, the Fulton County Superior Court overturned a decision of the Georgia Environmental Protection Division (EPD) issuing a permit to Longleaf Energy Associates, LLC (Longleaf), a shell company owned by LS Power, to build a 1200 megawatt coal-fired power plant in Early County, Georgia.  (see the Rethink Georgia press release here and the greentech media story here)

The key to Judge Thelma Wyatt Cummings Moore’s decision (longleaf-decision.pdf) was the Supreme Court’s ruling last year in Massachusetts v. EPA that carbon dioxide is an “air pollutant” subject to regulation under the federal Clean Air Act (Act).

Under the Act and the EPA’s regulations, certain areas of the country designated “attainment areas” must keep pollution levels within prescribed air quality limits (Early County is once such attainment area).  This includes the requirement that any new “major emitting facility” (a term that includes fossil fuel-fired electric plants such as the Longleaf facility) obtain a permit and abide by the emissions limitations outlined in the permit.

Major emitting facilities like the Longleaf facility must incorporate the “best available control technology” (BACT) to limit pollution.  This BACT analysis entails a determination by the permitting authority of the maximum reduction of each regulated pollutant for the particular project.  The emissions limitations in the facility’s permit must be set based on that “best available control technology.”

The Sierra Club and the Friends of the Chattahoochee (Petitioners) challenged the Georgia EPD’s decision to issue a permit for construction of the Longleaf plant.  After an EPD administrative law judge (ALJ) dismissed the challenge and upheld the permit, the Petitioners appealed to the Fulton County Superior Court alleging that the ALJ erred by making no findings on, among other things, carbon dioxide emissions, including failing to require that the EPD do a BACT analysis.

The court agreed with Petitioners and found the ALJ’s decision erroneous for deferring to the EPD’s inadequate permitting process.  In particular, the court found that, because carbon dioxide is an air pollutant under the Act, a BACT analysis should have been conducted by the EPD to set a carbon dioxide emissions target for the Longleaf project.

The immediate result is that the Georgia EPD will have to conduct a carbon dioxide emissions analysis, and Longleaf and its developers, LS Power and Dynegy Inc., will have to comply with the resulting emissions target to build the power plant. 

If other states follow the Georgia ruling, future coal-fired power plants will have to be designed to reduce carbon dioxide emissions if they are to gain regulatory approval.  One way to do that is to equip new plants with carbon capture and sequestration technology.  Thus, the decision could increase the demand for the technology and be a welcome boost to the carbon capture industry.

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A123 Batteries Show Viability and Versatility

July 14th, 2008


In a recent post, I wrote about one of A123 Systems’ (A123) new products - the Hymotion Plug-in Conversion Module, which can convert the Toyota Prius into a plug-in electric vehicle and boost its mpg to over 100 for the first 30-40 miles of driving.

Last month saw more good news for the Boston area battery maker.  First, the U.S. Department of Energy’s National Renewable Energy Laboratory (NREL) announced that it had signed a three-year deal with A123 to support the company’s efforts to develop more powerful and longer lasting batteries for hybrid-electric vehicles.

Under the Cooperative Research and Development Agreement, NREL and A123 will research new techniques for improving thermal management in transportation batteries.

A123 also got a boost for a different application of its battery technology – using batteries to get more power out of the electric grid.  CNET recently reported that some electric utilities (unnamed for now) have made a deal with A123 to use its lithium ion batteries to help stabilize the grid (see the greentech media story).

Several of A123’s patents and applications, including U.S. Patent No. 7,348,101, U.S. Patent No. 7,261,979 and U.S. Application Pub. No. 2007/0166617, cover various aspects of lithium ion battery technology.   A123’s patented battery technology reduces the amount of time necessary for charging and loses relatively little capacity and power over numerous charge/discharge cycles. 

The continuing good news for A123 indicates that the company is widely viewed as a winner.  Significantly for A123, it also demonstrates the versatility of its technology for use in a variety of applications.