Earlier this month Nichia and Seoul Semiconductor (Seoul), whose bitter LED patent battles spanned courts and administrative bodies across three continents, announced that they have resolved almost all of their litigation.  The parties will enter a cross-licensing agreement covering their LED and laser diode technology.

The disputes included patent infringement claims involving utility and design patents, false advertising and defamation claims, as well as claims of anti-competitive conduct.  The suits raged in Europe, Japan, Korea and Germany, as well as multiple U.S. jurisdictions, including Texas, California, Michigan and the International Trade Commission.

Some of the highlights (or lowlights, as it were) included:

A Nichia “victory” in an LED design patent case where Seoul made only two sales of infringing products amounting to $62 in damages; the court awarded a judgment of the $250 statutory minimum (see my posts on this case here and here)

A Nichia suit accusing Seoul of false advertising and unfair competition in connection with Seoul press releases claiming the company’s accused products were “actually non-infringing” and it had “substantially prevailed” in litigation when in fact a jury had found Seoul willfully infringed all four Nichia design patents (see my post on this case here)

A Seoul suit accusing Nichia of monopolization and attempted monopolization by pursuing baseless lawsuits to preserve its monopoly power in the white side-view LED market, including allegedly contriving a fake purchase of Seoul LEDs just to create a U.S. sale and establish jurisdiction for an infringement suit (see my post on this case here)

One interesting epilogue is that Nichia put out a follow-up press release taking pains to deny any cooperative arrangements between Nichia and Seoul that might suggest collusion or other anti-competitive behavior.   The press release noted some media reports of cooperation between the two competitors, which may have included Communist media because Nichia made clear that it is “by no means a ‘comrade’ of [Seoul].”

The LED wars between Nichia and Seoul involved so many lawsuits and so much bad blood, that it reached the point where a new complaint filed was no longer news.  But the bitter rivals finally making peace is definitely news.

The Clean Energy Patent Growth Index (CEPGI) is a quarterly patent tracking service operated by the Heslin Rothenberg law firm. 

According to CEPGI’s 2008 4th quarter report, 2008 saw the most issued clean energy patents of any year since the index began in 2002.  This despite the 2008 first quarter numbers being down from the first quarter the previous year and lower than in the fourth quarter of 2007 (see my previous post on the CEPGI 2008 first quarter report here). 

CEPGI recorded 928 granted clean energy patents last year, up from about 700 in 2002.  Patents in wind, fuel cells, hydroelectric, tidal and geothermal technologies all increased from 2007 to 2008, with new highs for hydroelectric and tidal.

Fuel cell technology continues to be by far the most crowded field, but wind patents have grown the most, rising from 42 patents issued in 2002 to 155 issued in 2008.

As to who owns all these patents, it is the automobile industry that dominated the list in 2008, including Honda (57 patents), General Motors (55), Toyota (30) and Nissan (24). 

Since 2002, Honda, GM, Toyota and Nissan are in the top ten along with Ford and such fuel cell makers as UTC Fuel Cells, Ballard Power Systems and Plug Power.

Rounding out the top ten are General Electric, with mostly wind and solar patents, and Canon, with solar technology.

The top universities in the last eight years are the University of California, with 34 clean energy patents, and the California Institute of Technology, with 22.

The CEPGI reports contain all kinds of information and analysis and provide useful periodic snapshots of this hot area.

 

A post on the Green Light blog led me to an interesting Green Inc. story about a new cottage industry – refurbishing and reselling used wind turbines. 

As wind turbines have become larger and more efficient, 1980’s era wind farm owners have discarded their old turbines in favor of the newer models.  A bunch of companies that overhaul and sell used wind turbines have emerged, including Halus Power Systems (Halus), Energy Maintenance Service (EMS), Aeronautica Windpower and Nexion DG.

The first thing I thought of as a patent attorney was the potential infringement liability.  If indeed the turbines at issue are from the 1980’s, to the extent they were patented, the patents have expired by now.

But if these companies are servicing turbines made more recently, infringement could be an issue.  Under U.S. patent law, once a patented article is sold, repair of the article is permissible, but reconstruction (making an essentially new article on the template of the original) constitutes infringement.

The line between repair and reconstruction is not always clear and depends on the facts of each case.  The types of refurbishment that the U.S. Court of Appeals for the Federal Circuit has held to be permissible repair include re-applying a non-stick coating to a cooking device, replacing an inner container for medical waste, and replacing disks in a tomato harvester head.

By contrast, when an entirely new cutting tip was created for a patented drill bit after the existing cutting tip could no longer be sharpened and reused, the Federal Circuit found the overhaul to be reconstruction.

Two key issues run through the case law on repair and reconstruction.  The first is whether the entire patented article as a whole can be viewed as having completed its useful life.  In these cases, refurbishment typically is deemed infringing reconstruction.

The second is whether the whole patented article consists of a combination of unpatented parts.  In those cases, even where refurbishment is extensive and includes disassembly, modification or replacement of many of the unpatented components, the process is likely to be viewed as permissible repair.

So, assuming the possibility of overhauling patented wind turbines, if the used or broken turbines still have useful life in them and consist of unpatented blades, generator, gearbox, etc., these resellers are likely to be in the clear.  On the other hand, if the turbines are spent or have anything like the patent protection of Clipper Windpower’s Liberty wind turbine, an overhaul could rise to the level of patent infringement.

Another factor, of course, is authorization from the patent holder.  Halus’s website says the company specializes in remanufacturing wind turbines originally produced by Vestas, but it’s unclear whether there is some type of partnering arrangment between the two companies.

When South Korean company Mirae Lighting (Mirae) ran out of money before it could start manufacturing its flat panel lights for backlighting LCD TVs, Cupertino, California startup Lumiette, Inc. (Lumiette) bought Mirae’s patent portfolio covering the lighting technology and manufacturing methods in the hopes of selling the flat lights for ordinary residential lighting purposes.

The patent portfolio includes pending patent applications Pub. No. 2006/0279215 and 2007/0247070 (‘070 application) directed to flat fluorescent lamps.  Though the lamps work essentially the same way as standard fluorescent bulbs, the difference is that the electrodes 140 are external to the channels 111 on electrode sections 111a, so the bulbs can be made very thin, four millimeters thin to be exact.

According to this greentech media interview with a Lumiette employee, the bulbs also include a reflection layer between the flat glass back panel and the formed glass in front, which reflects light forward and boosts efficiency.  Because the system efficiency is so much greater than in standard fluoroscent bulbs (about 90% versus 60% range), Lumiette’s flat panel lights last longer than fluorescents. 

Lumiette also claims that its lights are as bright as LEDs but at a substantially reduced cost.  It’s good to know that substantial energy efficiency doesn’t always require radically new technology but can be achieved with incremental changes to existing technology.

Voltaix, LLC (Voltaix) is a New Jersey company that manufactures chemicals for the semiconductor and solar energy industries. 

Voltaix owns two U.S. Trademark Registrations, Nos. 2,954,404 (voltaixinc_reg.pdf) (‘404 registration) for the word mark VOLTAIX, INC., and 2,992,964 (voltaix_reg.pdf) (‘964 registration), for the word mark VOLTAIX.  Both registrations are for “chemicals used in the manufacture of semiconductors and photovoltaic devices” in Class 1.

Last month Voltaix sued NanoVoltaix, Inc. (NanoVoltaix) in federal court in New Jersey, accusing the Tempe, Arizona photovoltaics (PV) equipment and technology company of willfully infringing its registered marks. 

The complaint (voltaix_complaint.pdf) includes claims for federal trademark infringement, false designation of origin under the Lanham Act, unfair competition, state trademark infringement, misappropriation and dilution and a count for cancellation of NanoVoltaix’s U.S. Service Mark Registration No. 3,208,703 (nanovoltaix_reg.pdf) (‘703 registration).

The ‘703 registration is for the word mark NANOVOLTAIX for “management and business consulting services in the field of nanotechnology” in Class 35. 

NanoVoltaix also owns U.S. Trademark Application No. 77/542,413 (nanovoltaix_app.pdf) (‘413 application), filed in August 2008 for the word mark NANOVOLTAIX for PV solar cells and PV and silicon manufacturing equipment in Class 9, installation, repair and maintenance of PV and silicon manufacturing equipment in Class 37, and solar cell and PV system design in Class 42.

Voltaix has asked the court to enjoin the defendant from using the NANOVOLTAIX mark and from further prosecuting the ‘413 application.  The complaint also requests payment of NanoVoltaix’s profits through use of the allegedly infringing mark along with treble damages, punitive damages and attorneys’ fees.

On willful infringement, the complaint alleges that NanoVoltaix ignored plaintiff’s cease and desist demand.  The complaint further alleges that one of the principals of NanoVoltaix became aware of plaintiff’s VOLTAIX mark through doing business with Voltaix while working for a previous employer.  According to the complaint, this principal was involved in selecting the name and mark NANOVOLTAIX.

It seems to me the U.S. Patent & Trademark Office (PTO) didn’t get it quite right with respect to the marks at issue in this case.  For one thing, the mark VOLTAIX as used by Voltaix is arguably merely descriptive of the goods sold under the mark. 

Consider that the definition of “voltaic” (per dictionary.com) is “noting or pertaining to electricity or electric currents, esp. when produced by chemical action…” and the goods listing for Voltaix’s registered marks is “chemicals used in the manufacture of semiconductors and photovoltaic devices”.  But the PTO never raised descriptiveness in the prosecution of the marks.

In the prosecution of NanoVoltaix’s ‘413 application the PTO has issued an office action but failed to raise the objection that there is a likelihood of confusion with the prior VOLTAIX registrations.  This may be because the NANOVOLTAIX application is in different classes than the VOLTAIX registrations.

However, it still seems compelling that the prior VOLTAIX registrations relate to chemicals used in the manufacture of PV devices, and the ‘413 application relates to PV cells, manufacturing equipment for the production of PV, and installation and servicing of such equipment. 

In the complaint, Voltaix makes the point (valid I think), that the term “nano” is generic and can’t serve to distinguish the NANOVOLTAIX mark from the VOLTAIX marks, rendering the marks identical for likelihood of confusion purposes.

In any event, this is a true eco-mark era green branding dispute and will be a very interesting case to watch.

SolFocus is a Mountain View, California startup that develops and makes concentrating solar energy systems.  Last month SolFocus secured $47.5 million in C round funding that the company will use to commercialize its technology (see the greentechmedia story here).

The funding is primarily from Apex Venture Partners and some other sources, including New Enterprise Associates and NGEN Partners.

SolFocus’s concentrating photovoltaic (CPV) technology combines the company’s proprietary reflective optic system with high efficiency solar cells purchased from advanced photovoltaics (PV) makers such as Spectrolab and Emcore. 

CPV systems reflect and concentrate natural sunlight onto solar cells.  One advantage of CPV is that it requires only small solar cells for power generation because of the high concentration of sunlight, which in the SolFocus system is boosted by a factor of 500.

SolFocus’s optic system is covered by three patent applications filed on May 5, 2006 (probably filed on the same day to avoid any one becoming prior art to the others).

U.S. Patent Applications Pub. Nos. 2007/0256724 (‘724 application), 2007/0256725 and 2007/0256726 describe CPV systems wherein the reflector and lens can be manufactured together as self-forming and self-aligning components, resulting in reduced assembly and maintenance costs. 

The patent pending system also reduces heat damage to the reflector and the solar cells by evenly distributing heat and transferring it to an aperture though which it can escape the CPV assembly.

The ‘724 application is directed to the basic CPV device (100), which includes an optical element (110), a PV cell (120), a primary mirror (130), a secondary mirror (140) and a heat spreader (150).  The optical element (110) has a large convex surface (112) and an upper layer (111) with an aperture surface (115).  The PV cell (120) is located in a cavity region (113) at the center of the convex surface (112).

The reflective or refractive surfaces of the mirrors are designed so that sunlight enters the optical element (110), travels through a specific region of the aperture surface (115) and bounces off corresponding regions of the mirrors, from the primary mirror (130) to the secondary mirror (140) and from the secondary mirror (140) onto the PV cell (120) (see Fig. 2, below).

The central portion (151) of the heat spreader (150) is disposed over the cavity (113), and the curved peripheral portion (152) is formed on or secured to the back surface of the primary mirror (130). 

The heat spreader (150) is made of a high thermal conductivity material, and because of differences in thermal resistance between the heat spreader (150) and the optical element (110), the heat collected by the CPV device is transferred from the heat spreader (150) to the front aperture surface (115).  This results in more than 30% of the generated heat radiating out from the CPV device.

SolFocus’s CPV technology seems to impress customers in the U.S. and abroad:  the company’s solar energy systems have already been installed in Spain and San Francisco (with more to come in Spain), and a division of the Samaras Group has partnered with SolFocus to build a new 1.6MW facility in Greece. 

Honeywell International Inc. (Honeywell) owns U.S. Patent No. 6,373,188 (‘188 patent), directed to a solid-state light emitting device that boosts efficiency by reducing the amount of radiation that escapes from the device. 

The patented device is designed to use radiation from an LED to excite phosphors and reflects some of the emitted radiation back to the phosphor layer to further interact with and excite the phosphor material.

In 2007 Honeywell sued Philips Lumileds Lighting Co. (Philips Lumileds) and Cree Inc. in federal court in Marshall, Texas, alleging that the two LED makers infringed the ‘188 patent.  Honeywell was represented by the law firm of Paul, Hastings, Janofsky & Walker (Paul Hastings).

Philips Lumileds moved to disqualify Paul Hastings from representing Honeywell on the grounds that the firm does a range of legal work for the Philip Lumileds affiliate Philips Electronics North American Corporation (PENAC).  Specifically, Paul Hastings represents PENAC in government relations work, and in the course of this work represented numerous entities of the Philips Corporation.

Last month U.S. Magistrate Judge Charles Everingham granted Philips Lumiled’s motion and ordered that Paul Hastings be disqualified from representing Honeywell in the suit (paul_hastings_dq_order.pdf). 

Judge Everingham held that the firm’s representation of Honeywell adverse to Philips Lumileds created a concurrent conflict of interest under the American Bar Association model ethics rules.

A very significant factor was that Philips Lumileds and the other Philips affiliates represented by Paul Hastings share a common internal legal department, which directs intellectual property strategy for the corporation worldwide. 

The judge also noted that the attorneys working for PENAC and those representing Honeywell work mainly in the firm’s Washington, D.C. office, creating the possbility that the attorneys for Honeywell might have access to Philips confidential information.

These facts led the judge to disqualify Paul Hastings:

The presence of a centralized legal team, the current representation of PENAC as a client of [Paul Hastings], and the high probability of disclosure of confidential information lead the Court to give great weight in favor of disqualifying [Paul Hastings] from the present suit. 

I imagine this won’t be the last time courts will see conflict and disqualification issues arise in clean tech litigation.  Many big conglomerates, including for example, oil and energy companies, have spun out new corporate subsidiaries and affiliates in recent years to develop clean energy and environmental technologies. 

It seems likely that big law firms that have longstanding relationships with these big companies will be sought out by others to take an adverse position in a lawsuit against one of their client’s new affiliates or subsidiaries.  In these situations, the firms would have to either get the consent of their established clients or forgo the new engagement.

Over the last eight months or so I’ve been blogging about the process of prosecuting an eco-mark application in the U.S. Patent & Trademark Office (PTO), using my own experience trying to get a federal registration for the GREEN PATENT BLOG mark.

I discussed the PTO’s first office action initially rejecting my application on descriptiveness grounds (see post ), my response to that rejection (see post ), the PTO’s final office action rejecting my application for the same reason (see post ), my request for reconsideration arguing acquired distinctiveness (see post here) and the notice of publication indicating that the PTO would accept my mark on acquired distinctiveness grounds (see post here).

The prosecution process took some time and legal argument because the PTO rejected GREEN PATENT BLOG as “merely descriptive” of blogs that provide information on green technology (a trademark can’t be registered with the PTO if it is a generic term or descriptive of goods or services because that would restrict competitors from conveying information about their goods or services). 

When my argument against descriptiveness didn’t fly, I made the alternative argument of acquired distinctiveness.  Acquired distinctiveness is a trademark law concept which means that the mark, though it may not be inherently distinctive enough for trademark protection, has become sufficiently distinctive through use so that consumers have come to recognize it as a source identifier for the goods or services.

The PTO found my evidence of acquired distinctiveness persuasive (I submitted evidence such as other blog and media mentions and e-mails from readers stating that GREEN PATENT BLOG had come to identify my blogging services).  Thanks again to all the readers who provided those e-mails.

Last month, the PTO issued a certificate of registration for the service mark GREEN PATENT BLOG (gpb_reg.pdf) for “on-line journals, namely, blogs featuring news, information and legal analysis relating to intellectual property law issues in the clean technology and renewable energy industries” in Class 41.

Now the exciting part:  I can (and have) put the little “R” in a circle next to GREEN PATENT BLOG to indicate that it’s a federally registered mark.