A patent dispute that had been raging in three jurisdictions came to an end last month, when Durham, North Carolina LED maker Cree and Boston University (BU) settled with Sunnvale, California based LED solutions provider Bridgelux.

The lawsuits started in 2006, when Cree and BU sued Bridgelux, alleging infringement of patents relating to LED technology.  The patents included U.S. Patent No. 6,657,236 (‘236 patent), owned by Cree, and U.S. Patent no. 5,686,738 (‘738 patent), owned by BU and licensed by Cree.

The ‘236 patent is directed to LEDs having light extraction structures, which boost efficiency by reflecting, refracting or scattering light so that more light escapes the LED. 

The ‘738 patent relates to a method of preparing highly insulating gallium nitride (GaN) monocrystalline films in a molecular beam epitaxial growth chamber using a process called epitaxy (depositing a monocrystalline film on a monocrystalline substrate).  GaN is important because it can emit light that is on the edge of the UV-visible region.

Cree and BU asserted the ‘236 and ‘738 patents along with a few other patents in courts in Winston-Salem, North Carolina, Lufkin, Texas and San Francisco, California.  Bridgelux accused Cree of infringing one of its patents – U.S. Patent No. 6,869,812, directed to an LED chip with a transparent substrate and an elongated aspect ratio – but by and large Cree was on the offensive in these cases.  The North Carolina case was dismissed in 2007 on jurisdictional grounds.

One interesting thing about this dispute is that Cree handily won the claim construction phase of the California case (claim construction is where the court interprets the legal scope of the patent terms; this step is crucial to infringement cases and can lead to settlement if one party does well).

In claim construction, the patentee generally argues for broad interpretations to sweep more accused devices into the purview of the asserted patents, while the accused infringer asserts narrow constructions to avoid infringement liability.  In the California claim construction order (nd_cal_claims_order.pdf), the court adopted Cree’s broader constructions of almost all of the disputed claim terms.

For instance, the parties disputed whether the term “adjacent” in the ‘236 patent claims means the structures are near each other (Cree’s position) or must be in direct physical contact with each other (Bridgelux’s position).  The court held the term means near each other because the patent allows for two “adjacent” layers to sometimes be separated by an intermediate layer.

In addition, the term “layer” was construed to mean “a defined thickness that is part of a material” (Cree’s position) instead of Bridgelux’s narrower interpretation of it as “a film made of a specific composition of chemical elements and a specific doping concentration.” 

Even the term “on” was decided in Cree’s favor to mean “positioned indirectly or directly above” instead of “positioned in direct contact with” as Bridgelux proposed. 

Bridgelux has taken a license to the patents at issue, and the parties have entered into a supply agreement so Cree will become a significant supplier to Bridgelux.

The Duke Law IP & Cyberlaw Society’s 8th Annual “Hot Topics” in Intellectual Property Law Symposium is being held on Friday, February 6, 2009 at Duke Law School and will include a discussion on how IP affects efforts to address global climate change.  The keynote speaker will be Carl Horton, Chief IP Counsel for GE, whose talk is entitled “Current Challenges Facing IP Practitioners.”

The all-day event will have a morning session focusing on the effects of intellectual property protection on the adoption of clean technologies, including in developing economies. 

I will have the honor of being on the morning panel, which will include individual presentations followed by a panel discussion moderated by Duke Law School Professor Jerome Reichman.  My talk is entitled “Keeping the LEDs on and the Electric Motors Running:  Clean Tech in Court After eBay.”  

The other clean tech IP panelists and their presentations are:

Dr. Bertin Martens, Deputy Chief Economist for the European Commission Trade Directorate, “Do Intellectual Property Rights Affect the Transfer of Climate Change Technology to Developing Countries?”

Dr. Keith Maskus, Professor of Economics and Associate Dean at the University of Colorado at Boulder, “Economic Perspectives on Encouraging Transfer of Green Technologies: Problems and Prospects”

Dr. Douglas H. Pearson, Associate at Jones Day, “Intellectual Property Rights in Clean Tech, a Patent Practitioner’s Perspective”

The afternoon panel discussion relates to developing a legal regime for generic biologics and will be moderated by Duke Law School Professor Arti Rai. 

North Carolina attorneys can earn 5 CLE credits, and out-of-staters get certificates of attendance.  More info on the symposium can be found here, and online registration is here.

 

An interesting case right here in San Diego is highlighting the disparities between the EPA’s estimated automobile mileage data and the actual road figures and whether car owners can adjust their driving habits to bridge the gap (see the Law.com article here).

The case involves allegations of false advertising and deceptive claims by Honda about its Civic Hybrid.  The plaintiff, Gaetano Paduano, sued Honda in San Diego County Superior Court in 2005 after he became disappointed with the gas mileage of his 2004 Civic Hybrid (he was getting 23-30 mpg while the EPA number was 48).  In response to his inquiries, a Honda employee told him he would have to drastically change his driving habits to boost the mpg.

Paduano brought state and federal warranty claims and California state false advertising and deceptive practices claims relating to statements in Honda’s Civic Hybrid brochures about driving habits and fuel efficiency.  The brochure tells drivers that they do not have to do “anything special” to get “terrific gas mileage” and instructs them to:

Just drive the Hybrid like you would a conventional car and save on fuel bills.

In 2006, the trial court ruled that Honda was entitled to summary judgment and dismissed all of Paduano’s claims.  The court held that the representations in Honda’s brochure complied with the federal regulations on fuel economy advertising disclosures and that the state deceptive advertising claims were preempted by the Energy Policy and Conservation Act, the federal law that regulates disclosure of fuel estimates.

Last month, California’s 4th District Court of Appeal affirmed the portion of the summary judgment ruling regarding Paduano’s breach of warranty claims, but reversed as to the deceptive practices and misleading advertising claims, ruling that Paduano could go forward on the latter.

In a 2-1 opinion (paduano_opinion.pdf), the appeals court held that Paduano had put forth enough evidence (and Honda had presented no evidence to the contrary) that a jury could find that the statements in the Honda brochure could mislead a reasonable consumer.

Specifically, a Honda representative told Paduano that “you cannot drive in a normal manner in order to get the mileage” – the “normal manner” being accelerating and stopping with the flow of traffic and “accelerating as by law you’re supposed to [do] to get on the highway.”   The record showed that one Honda employee had concluded that “you can’t do any of those [usual] things” if you want to “obtain better gas mileage.”

The court found this evidence contradicted the statements in the brochure that a driver need not do “anything special” to achieve superior gas mileage and called into question Honda’s claim that a consumer just has to drive the Hybrid like he would a conventional car:

There is thus evidence that “getting terrific gas mileage” might not be accomplished as easily as Honda suggests to consumers in its brochure.

So Paduano’s case can go to trial in what could further damage Honda’s green cred.  Another dissatisified Civic Hybrid owner brought a class action suit in 2007, alleging that the car maker misled consumers by inflating mpg claims.

Thanks to Stu Soffer for bringing this case to my attention.

Deployment of wind power is hampered by the difficulties of transfering energy from the rural areas where wind farms typically operate to the densely populated areas that need the energy. 

Dr. Majid Rashidi, a mechanical engineering professor at Cleveland State University, has designed wind towers that can be mounted on top of city buildings to allow electricity to be generated in large population centers.

Dr. Rashidi has at least two pending patent applications covering his technology.  One of his designs is a helical tower with spiraling grooves, described in U.S. Patent Application Pub. No. 2008/0279690 (‘690 application).

The wind tower of the ‘690 application has a helical structure (110) and a spiraling groove (120) defined by adjacent spiraling threads (119, 121).  The groove and threads extend around the longitudinal axis (140) of the helical structure’s central core (320).

  

In one embodiment of the invention, the helical structure is about 130 feet tall and about 30 feet in diameter.  Turbines (130) having blades with 6-10 foot propeller diameter are positioned at least partially within the spiraling groove (120) of the helical structure (110).

U.S. Patent Application Pub. No. 2009/0015017 (‘017 application) just published last week (U.S. patent applications typically are published 18 months after their filing date).  The ‘017 application is directed to a wind power system that deflects wind into two separate flow paths.

The wind deflector (20) has a cylindrical shape to optimize its acceleration effects on air flow.  It includes an interior deflector frame (25) surrounded by a cylindrical shell (24).  The wind deflector (20) has a top spindle (28) fixed to the frame (25) and bottom spindle (27).

Top and bottom cross members (41 and 45) can be rotated with respect to spindles (27 and 28) to position the turbines (30) into the wind.  A drive shaft (35) and a mounting frame (40) also rotate to optimize the turbines’ positions to face the prevailing wind.

Each drive shaft is coupled to a generator (38), and wires (56) carry the electrical power from the generators through an exit connection (59) and on to the city building that needs power.

According to this Ecogeek article, Dr. Rashidi’s towers won’t replace wind turbines, but can complement them to provide onsite power to buildings in large population centers.

Boston-Power, a Massachusetts advanced battery company, makes lithium-ion batteries that charge faster and last longer than conventional lithium-ion batteries. 

Last month, Boston-Power announced that Hewlett-Packard (HP) would be its first customer and would offer its Sonata battery as an upgrade option in select HP notebook PCs in early 2009.  (see the greentechmedia piece here and the New York Times article here)

Boston-Power owns several U.S. patent applications covering its battery technology, including U.S. Application Pub. Nos. 2008/0008928 (‘928 application) and 2008/0008933 (‘933 application).

Conventional lithium-ion batteries have a cathode (an electrode that circulates electrons) made of lithium cobalt.  The ‘933 application is directed to a blend of two or more different types of cathode materials in the positive electrode which enables manufacturing of larger cells than conventional lithium-ion batteries that use lithium cobalt alone. 

According to the ‘933 application, increasing capacity through these larger cells is a better solution than increasing the number of cells, which raises the probability of over-charge or over-discharge.

The ‘928 application is directed to a battery integrated with a current interrupt device (CID).  When lithium-ion batteries are improperly charged, exposed to high temperatures, or are short circuited, they may produce gas, and the pressure increase can be dangerous. 

CIDs protect against excessive internal pressure increases in batteries by interrupting the current path when pressure increases.  However, according to the ‘928 application, CIDs incorporated within batteries take a lot of space and limit battery capacity.

The invention of the ‘928 application is a battery in which at least a portion of the CID (28) may be located external to the battery can (21) because the CID is in electrical communication with the battery can.  Specifically, at least one of the cell casing (22) and the lid (24) of the battery can (21) are in electrical communication with the second electrode (14) of the battery (10) through the CID (28).

 

Boston-Power’s technology provides significant advantages over the competition.  According to the greentech media article, Boston-Power’s batteries take a half hour to charge to 80% capacity, instead of 2 hours for an ordinary battery. 

Also, the batteries can last about 1,000 charging cycles (i.e. three years), before the charging capacity becomes substantially diminished, whereas conventional lithium-ion batteries go about 300 cycles or fewer.  As a result, HP will provide a 3-year warranty with the Sonata battery.

Solvay, a Belgian chemicals and pharmaceuticals conglomerate, owns U.S. Patent No. 6,730,817 (‘817 patent), entitled “Method for preparing 1,1,1,3,3-pentafluoropropane”.  The ‘817 patent is directed to processes for making HFC-245fa, a hydrofluorocarbon (HFC) that does not deplete the earth’s ozone layer.

The processes claimed in the ‘817 patent are commercially important because HFC-245fa is one of a group of non-ozone depleting HFCs that were legislatively mandated in the 1990’s to replace ozone depleting chlorofluorocarbons and hydrochlorofluorocarbons.

In 2006 Solvay sued Honeywell in federal court in Wilmington, Delaware, accusing the chemicals, security systems and aviation instrument maker of infringing the ‘817 patent by making HFC-245fa at its Louisiana plant.

Recently both parties filed a flurry of summary judgment motions relating to both infringement and validity of the ‘817 patent.  Last month, Honeywell prevailed when Judge Sue L. Robinson ruled that it, not Solvay, was the first to invent the patented chemical process.

The patent law provision at issue in the validity motions was section 102(g).  Section 102(g) of the U.S. patent law governs patent priority disputes. 

It ensures that a patent is awarded to the first inventor by providing that a patent is invalid if the invention was made in the U.S. by someone else before the invention date of the patent applicant.  Section 102(g) also promotes public disclosure of an invention by requiring that the party alleging prior invention did not “abandon, suppress or conceal” his invention. 

A party can prove first invention under section 102(g) by either demonstrating that he was the first to reduce the invention to practice (i.e., the invention is ready to be used for its intended purpose) or he was the first to conceive of the invention and was diligent in attempting to reduce it to practice. 

Honeywell’s summary judgment motion on validity asserted that it was the first inventor under section 102(g) and therefore certain claims of the ‘817 patent are invalid.  Solvay’s cross-motion for summary judgment on validity argued that Honeywell had abandoned, suppressed or concealed the invention and therefore could not be the first inventor under section 102(g).

The research on Honeywell’s chemical process (and conception thereof) was conducted in Russia by contracted engineers in May 1994.  Honeywell replicated the work of the Russian engineers and reduced the invention to practice in August 1995 by using certain methods to purify the HFC-245fa, prior to Solvay’s asserted priority date of October 23, 1995.

Based on its August 1995 reduction to practice date, Honeywell argued that it was entitled to summary judgment that it was the first inventor under section 102(g).  Solvay countered that Honeywell could not be the inventor because the conception was in Russia, not the U.S.

Judge Robinson rejected Solvay’s arguments (honeywell_opinion.pdf), finding no support for the contention that conception must occur in the U.S., and concluding that, in any event, Honeywell had conceived of the invention in the U.S. because it “possessed a definite and permanent idea of the complete and operative invention” upon receiving the information and instructions from the Russian engineers. 

Solvay’s summary judgment motion asserted that it was the first inventor and argued that Honeywell had intentionally abandoned, suppressed or concealed the invention.  Solvay pointed to, among other things, a particular invention questionnaire used in Honeywell’s internal policies allegedly to delay patent filings based on potential for commercialization of the technology and Honeywell’s changes in market predictions based on Department of Energy (DOE) regulatory activity.

Judge Robinson rejected Solvay’s suppression arguments, finding that Honeywell’s questionnaire  is used primarily to determine the most appropriate form of intellectual property protection for an invention, not to suppress inventions or encourage delays in patent filing.  The court also found that, in this instance, Honeywell’s monitoring of DOE regulations ultimately led to earlier disclosure of the invention.

This is something I haven’t seen before:  a shareholder derivative action for patent infringement. 

BaoLiang Wang (Plaintiff Wang) is a 22% shareholder of a small California LED sign maker called Sun LED Sign Supply Inc. (Sun). 

Last month, Plaintiff Wang sued Sun, two of its directors, Xiao Ping Wang (Defendant Wang) and Wei Rong Fang, as well as JT LED USA (JT), Sunfire LED, LLC (Sunfire) and The LED, Inc. in federal court in Los Angeles, alleging patent infringement against all defendants and unfair competition against the two directors of Sun.

The patent at issue is U.S. Patent No. 7,245,279 (‘279 patent), for which Defendant Wang is the named inventor.

The ‘279 patent is directed to an easily extendable waterproof LED display array.  Each LED unit comprises a tray-like housing (62) containing a printed circuit board (55).  LED elements (31) are soldered onto the circuit board, and an outer covering (45) is attached to the opening of the housing.

A liquid gel provides a watertight seal for the elements on the PCB.  Each unit has a positive power source (20) and a negative power source (21).  According to the ‘279 patent, a significant advantage of the invention is that each LED display unit has its own waterproof arrangement, so each unit can function separately, allowing LED displays of variable length at low cost.

According to the complaint (wang_complaint.pdf), while the application that issued as the ‘279 patent was pending, Defendant Wang assigned the application to Sun, “giving the exclusive right to [Sun] for a period of eight (8) years.”  The U.S. Patent & Trademark Office patent assignments database lists Sun as the assignee of the ‘279 patent.

The patent count of the complaint alleges that defendants’ JT-SLS01, JT-SLS02 and JT-SLS03 series products and similar waterproof LED devices infringe the ‘279 patent.  Defendant LED, Inc. is also accused of selling infringing LED modules.

Under the unfair competition claim the complaint alleges, on information and belief, that Defendant Wang:

. . . via false pretense and deceit, executed assignment of the 279 patent to himself on or about 4/23/2007, without proper corporate authority, violating the previous 8-year requirement, and in an attempt to avoid patent infringement liability.

The complaint goes on to accuse Defendant Wang of using the patented technology to conduct his own business, JT LED USA, dba Jia Tang Electronic Company, in violation of Sun’s exclusive right. 

Plaintiff Wang is asking the court to find defendants liable for patent infringement, to compensate him for his losses and to assess punitive damages on defendants for their alleged fraudulent acts.

So it’s a competing director type shareholder suit with an IP twist.  And because the inventor assigned away his rights, we have a situation in which the inventor is accused of infringing his own patent.