A rather unusual lawsuit was filed last month in San Francisco by a patent attorney named Edward Durney.  Mr. Durney is the sole shareholder of a company called A Truly Electric Car Company (ATECC), the plaintiff in the suit.

ATECC names Magna International, Inc. (Magna), Bluwav Systems, LLC (Bluwav) and Paperboy Ventures, LLC (Paperboy) as defendants and requests that a bunch of U.S. patent applications directed to electric vehicle technology be corrected to list Mr. Durney as a co-inventor.

Those applications are:

U.S. Patent Application Pub. No. 2004/0021437, entitled “Adaptive electric motors and generators providing improved performance and efficiency”

U.S. Patent App. Pub. No. 2005/0052080, entitled “Adaptive electric car”

U.S. Patent App. Pub. No. 2005/0045392, entitled “In-wheel electric motors”

U.S. Patent App. Pub. No. 2005/0046375, entitled “Software-based adaptive control system for electric motors and generators”

U.S. Patent App. Pub. No. 2005/0127856, entitled “Low-voltage electric motors”

U.S. Patent App. Pub. No. 2004/0263099, entitled “Electric propulsion system”

According to the complaint (truly_electric_complaint.pdf), Magna, Bluwav and Paperboy misused ATECC’s confidential information to effect a sale of Bluwav to Magna.  I spoke to Mr. Durney, who told me that ATECC was set up for the purpose of buying Bluwav, but Magna used the due diligence he performed to step in and buy Bluwav itself.

The most unusual aspect of the case is Mr. Durney’s claims of copyright infringement.  Mr. Durney apparently holds copyright registrations for the patent applications at issue:  U.S. Copyright Reg. No. TXu1-209-372 covers the work “Four Patent Applications About Electric Motors and Vehicles” and Reg. No. TXu1-256-390 covers “Adaptive Electric Motors and Generators Providing Improved Performance and Efficiency: A Patent Application”.

It seems to me that success on the copyright claim would have no effect on the patent rights because copyright protects only the expression of the idea (i.e., the text of the application), not the idea itself (i.e., the intangible patentable invention).  So even if the published patent applications infringe Mr. Durney’s copyrights, the defendants would still own the intangible patented ideas (should the applications issue) and the right to exclude others from practicing the patented inventions.

When I asked Mr. Durney about this, he told me he believes that his copyrighted expression has been violated by the defendants filing the patent applications he prepared (and made inventive contributions to) and having them published.  This is an additional way for him to seek the compensation he says was denied him for his work on the applications.

Truly fascinating.

Altair Engineering, Inc. (Altair) is a Michigan-based product design and development company and the owner of U.S. Patent No. 7,049,761 (‘761 patent), entitled “Light tube and power supply circuit.”

The ‘761 patent is directed to a light tube for a fluorescent light fixure having a plurality of light emitting diodes (LEDs) within the bulb. 

Light tube (20) is illuminated by LEDs (22) packaged inside the tube.  The light tube (20) includes a cylindrically shaped bulb portion (24) having a pair of end caps (26, 28) at opposite ends of the bulb portion.

The LEDs are mounted on a circuit board (30).  The circuit board (30) and LEDs (22) are enclosed by the bulb portion (24) and the end caps (26, 28).

In 2007, Altair sued LEDdynamics, Inc. (LEDdynamics) in federal court in Detroit alleging that the Vermont LED maker’s Ever LED TR Tube Replacement (“TR device”) infringed the ‘761 patent.

Last month Judge George Caram Steeh granted LEDdynamics’ motion for partial summary judgment that the TR device does not literally infringe claims 3, 4, 16 and 17 of the ‘761 patent (altair_order.pdf).

As in most patent infringement suits, claim construction (where the court provides a legal interpretation of the relevant terms of the patent claims) was dispositive.  Independent claim 3 of the ‘761 patent recites “a plurality of closely-spaced light emitting diodes” inside the bulb portion of the light tube.

During the claim construction phase of the case, the court had intepreted the term “closely spaced” to mean:

not spaced-apart, such that adjacent LEDs are sufficiently close that another LED cannot fit in the space therebetween

A crucial piece of evidence in the case was a photograph showing that the accused TR device contains one-watt LEDs, each about a quarter of an inch wide, spaced 1.25 inches apart (i.e., enough space for another LED to fit in between).

Accordingly, the court found that LEDdynamics did not infringe the asserted claims of the ‘761 patent because in the TR device “it is clear that another LED may fit between adjacent LEDs.”

Pax Scientific, Inc. (“Pax”) is a San Rafael, California company that specializes in fluid-handling technology used in applications such as fans, mixers, pumps, turbines, heat exchangers, ducts and propellers.  Pax owns U.S. Patent No. 5,934,877 (‘877 patent), entitled “Rotor with logarithmic scaled shape”.

The ‘877 patent is directed to a rotor, the surface of which is configured according to a logarithmic curve known as the Fibonacci Progression, or the Golden Section.  According to the ‘877 patent, this type of surface is commonly found in shells of the phylum Mollusca, particularly in the classes Gastropoda (that’s squid, cuttlefish and octopus to you and me) and Cephalopoda (e.g., snails and slugs).

This is an example of biomimetics, the application of systems found in nature to the study of engineering and the development of technology.  The ‘877 patent states that the invention “enables fluids to move over the surfaces of the rotor in their naturally preferred way, thereby reducing inefficiencies created through turbulence and friction…”

Claim 1 of the ‘877 patent reads:

A rotor for use with a fluid flow generator or reactor, said rotor being intended to rotate about a central axis and having a surface which defines an arcuate fluid pathway for fluid flow about the central axis about which the rotor is able to rotate, wherein the surface has the configuration of a logarithmic curve substantially conforming to the Golden Section.

Last month Pax sued Re:Thought, LLC (Re:Thought), a Colorado product design consulting firm, and Robert Irwin, the company’s co-founder, in federal court in San Jose, alleging that the firm’s Biometric Horizontal Wind Axis Turbine (BioHAWT) infringes the ‘877 patent. 

According to the complaint (pax_complaint.pdf), Irwin repeatedly contacted Pax’s president and CEO, Jay Harman, about developing a wind turbine using the techniques of biomimetics.  Pax alleges that Irwin revealed details about his design, including pictures and sketches, and solicited technical advice from Harman. 

Despite being warned that his design would infringe Pax’s ‘877 patent, the complaint states, Irwin and Re:Thought displayed a prototype of the BioHAWT in Denver in the fall of 2008.  The complaint accuses Re:Thought of direct infringement and and Irwin of contributory infringement and inducing infringement.

Welcome to Blawg Review #208.  It’s an honor and a privilege to host that weekly “Carnival” of law blogs.  For those of you not familiar with Blawg Review, it’s the oldest established permanent floating rundown of legal blog posts in cyberspace.

For those of you new to Green Patent Blog, welcome.  We operate at the intersection of IP law and all things green, clean, or renewable. 

We’re especially pleased you could join us during Earth Week, which of course, includes Earth Day.  So as we cover the law blogs today, we’ll put a special emphasis on the green and earthy.

The big green law story this week was the Environmental Protection Agency’s (EPA) proposed finding that greenhouse gases may endanger public health or welfare.  The Environmental Law Professor Blog has a good summary and a link to the EPA proposal.  This Greentech Media piece has additional analysis. 

This action comes after the Supreme Court’s 2007 decision in Massachusetts v. EPA, which held that carbon dioxide is a pollutant subject to regulation by the EPA and ordered the agency to conduct a scientific review and decide whether to regulate greenhouse gas emissions under the Clean Air Act.  The EPA’s proposed finding now enters the public comment period.

As to the economics of such regulations, Energy Legal Blog reports that the White House Office of Management and Budget (OMB) has concluded that the EPA’s finding will not in itself significantly affect the economy, but notes that OMB’s “narrow” analysis notwithstanding, “future regulation of GHGs is expected to have profound and far-reaching economic effects.”

Cleantech Blog discusses the Waxman-Markey draft bill designed to reduce tropical deforestation, which was made public in late March.  The bill provides for carbon offsets, an incentive program for preservation of tropical forests and “strategic reserve auctions” of additional emission allowances. 

Climate Intel blogs about the bill’s goal of reducing travel demand through a provision that requires states and cities to establish travel reduction goals as part of their transportation plans.

The only thing I hate more than carbon emissions is spam.  Turns out the two are linked, and there’s another reason to hate spam – it is contributing to global warming.  GreenBiz reports on a study by an environmental research firm concluding that the 63 trillion spam e-mails sent each year waste 33 terawatt-hours of energy (enough to power 2.4 million homes), with the average spam e-mail resulting in 0.3 grams of CO2 emissions.  Rocky Radar also covers the story with the green but provocative suggestion “Kill a Spammer, Save a Tree.” 

Also on Climate Intel this week is a report on two pieces of good news for the ethanol industry.  First, a report by the Congressional Budget Office found that it was high energy prices, much more than increased ethanol production, that led to spikes in food prices between April 2007 and April 2008.  Second, the EPA moved to increase the amount of ethanol that can be blended into gasoline to 15%.

Turning to state green laws, Green Tech Gazette reports that Michigan’s renewable portfolio standard may be starting a shift in the state’s manufacturing sector from the automotive industry to clean tech.  According to the story, Global Wind Systems Inc. will add 250 wind turbine manufacturing jobs this year, with 90% of the new hires coming from the state’s growing pool of former auto workers.  The state law requires utilities to provide 10% of electricity from renewable sources by 2015.

Over in the Empire State, Wind Power Law Blog posts about plans to manage coastal waters and strike a balance between the need for offshore energy development and protecting marine resources.  While some advocate a federal public trust doctrine to regulate development, the blog says, New York state is currently drafting a plan for its local waters.

The Howrey firm’s Global Climate Law Blog posts about NYU professor Richard Stewart’s prescription to fix U.S. policy on nuclear waste.  In a recent paper, Professor Stewart advocates a major shift in policy comprising a more flexible approach to waste management that would include reprocessing the waste as an alternative to disposal.

In Alabama, biological waste may rise to a constitutional issue.  According to Green, Inc., the New York Times’ energy and environment blog, Alabama legislators want to amend the state’s constitution to prohibit the use of biosolids, AKA sludge.  The article discusses the pros and cons of using biosolids – which comprise a potpourri of waste materials, including human, commercial, hospital and industrial wastes – as fertilizer.  According to the Green, Inc. story, U.S. farmers will likely use about 4 million tons of the stuff to fertilize their fields this year, despite the presence of such nasties as pharmaceuticals, steroids, flame retardants, metals, hormones and human pathogens.  Business executives, agronomists and hydrologists will meet at the Residuals and Biosolids 2009 Conference in Portland on May 3rd to talk about the future of biosolids.

Turning to IP and starting with false advertising, Joel Makower at Two Steps Forward analyzes the (now) Seven Sins of Greenwashing.  The greenwashing study, conducted by Canadian environmental marketing firm TerraChoice, finds that a staggering 98% of 2,219 products studied made at least one false or deceptive environmental claim.  The report divides the types of claims into categories, which were originally the six sins of greenwashing, and adds a seventh sin in this edition.  Mr. Makower analyzes TerraChoice’s criteria for assessing greenwash, and in an earlier post, discusses his take on what recent polling data reveal about consumer environmental attitudes.

Also apropos of our theme, over at the TTABlog John Welch discusses the fate of a trademark about a tree.  The Trademark Trial and Appeal Board affirmed the examining attorney’s refusal to register the mark SILVER BIRCH for skin and body preparations in part because the applicant was evasive as to whether the goods will contain silver birch as an ingredient.  The presence of material from the tree in the products was relevant to an analysis of the mark’s descriptiveness.

Coming off the Passover week, I would be remiss if I didn’t mention this post from Jonathan Turley’s Res Ipsa Loquitur Blog about a right of publicity lawsuit involving the image of a famous Jewish filmmaker in beard and payess.  Apparently Woody Allen sued American Apparel for using his likeness in an advertisement.  But it wasn’t just any likeness.  It was one of the all-time classics:  Woody’s Alvy Singer character in Annie Hall being perceived by Annie’s family as a Hasidic Jew.  Awesome!

Shifting gears to health law issues, David Harlow’s Health Care Law Blog discusses Massachusetts General Hospital’s suspension of its pediatric cardiac surgery program following two significant negative outcomes.  Drug and Device Law publishes its 50-state survey of medical monitoring law.  At Downtown Lawyer, Jodie Hill writes about an Eighth Circuit Court of Appeals decision holding that the Americans with Disabilities Act does not require an employer to accommodate an employee with cancer during her treatment and recovery period.

Bitter Lawyer offers a five-step plan for building a successful ambulance chaser practice for those attorneys putting up their own shingle.  

A better plan, I think, is to go camping.  There’s nothing more earthy than camping, and the Camping Earth Blog offers tons of suggestions, including what to eat (lunchmeat and deli cheese, but only for the first day or two, then peanut butter or roasted hot dogs), how to build a campfire, even how to buy hiking boots (closely examine the construction and look for good support).  And if you have such a good time roughing it that you can’t bear the thought of going back to your office lawyer job, Camping Earth even blogs about camping jobs (you know you want to be a Park Ranger!).

It was a pleasure being your host this week.  Blawg Review has information about next week’s host, and instructions on how to get your blawg posts reviewed in upcoming issues.

Just a quick note to announce that next week GPB will be hosting Blawg Review, that weekly “Carnival” of law blogs.  That means all are welcome to submit posts from across the legal blogosphere - whether relevant, irrelevant or wildly irrelevant - for me to discuss in my host post next Monday. 

If you would like to submit, please read Blawg Review’s Submission Guidelines first and use their submission form.

As I solemnly prepare for this awesome responsibility (which will fall during Earth Week, the week of Earth Day!), it has not gone unnoticed that this week is Environmental Education Week, which aims to increase our awareness of the environment in advance of that big day. 

So trawl the blawgs and let me know your suggestions!

Reticle, Inc. (Reticle) is a Los Altos, California startup that has developed a new carbon electrode material and process of making the material, which is ideal for use in ultracapacitors (see New Energy and Fuel article here).  

Ultracapacitors are used to store energy in applications that require storage of large amounts of energy and rapid energy discharge, such as electric vehicles. 

Ultracapacitors store energy through movement of electrons, i.e., separation of charged species as positive ions called cations migrate to a negatively charged electrode (anode), and negative ions called anions move to a cathode, or positively charged electrode.  The more ions that are attracted to their respective electrodes, the more energy the ultracapcitor stores.

There are two known ways to increase the number of ions attracted – boosting voltage and increasing the surface area of the electrodes.  This is where Reticle comes in.  The company’s patented process produces electrodes from granular activated carbon which have much greater surface area than any known electrode materials presently offered (see the inventor’s cogent explanation here).

Whereas typical processes consolidate carbon by pressing it into thin films, Reticle’s process applies pressure to the carbon material from all sides and obviates the need to add binders or adhesives.  This allows for better automation than other capacitor material, so the material can be machined into any size with lots of conductive surface area.

This picture shows one unique aspect of the resulting material, which the company calls “Reticle Carbon”:

That is, not only is the surface area greater, but all of the carbon particles remain connected to ensure that all the charge is distributed across the entire surface area of the material.

This table compares the specs and capabilities of two Reticle capacitors with those of a couple of other commercially available products:

Reticle Carbon also is a good material for desalination applications because the higher mass and surface area allows the acquisition of more ions before a regeneration step would be required.

Reticle’s manufacturing process and resulting carbon material are protected by a family of four U.S. patents:  U.S. Patent Nos. 6,350,520 (claims granular active carbon material made by a high temperature and pressure process), 6,511,645 (claims a process for producing carbon material by consolidating amorphous carbon using elevated temperature compression), 6,544,648 (claims a processed carbon material consolidated under elevated temperature and pressure) and 6,787,235 (claims a processed carbon material consolidated in a hot isostatic press under elevated temperature and pressure).

According to Jack Mastbrook, who does marketing development for Reticle, the company is currently seeking funding to ramp up operations.  But Mastbrook told me that Reticle already has a deal in place to sell its activated carbon to a major consumer products manufacturer, which plans to test the material as a replacement for batteries in its products.

This Gas 2.0 story reports that Piaggio, an Italian motorbike and scooter manufacturer, will launch its MP3 hybrid 3-wheeler in the U.S. in early 2010. 

According to the article, the MP3 would be the first “affordable” plug-in hybrid vehicle of any kind available in the U.S. (I guess that excludes the Tesla Roadster, which sells for over $100K). 

The unusual 3-wheel design of the scooter is protected by U.S. Design Patent No. D547,242 (‘242 patent).  A design patent only protects the ornamental features of a device and primarily consists of figures, like this one in the ‘242 patent: 

 

The MP3 hybrid will offer several operating modes, including electric only and three other hybrid modes – one designed to maximize performance, one to minimize fuel consumption and one to quickly recharge the batteries.

U.S. Patent No. 7,351,265 (‘265 patent) covers Piaggio’s scooter-size hybrid technology.  Entitled “Hybrid drive assembly for a vehicle, in particular a scooter,” the ‘265 patent is directed to a compact hybrid drive assembly that can be used in small, low-cost road vehicles but still provides a number of different operating modes.

The ‘242 patent describes a hybrid drive assembly (1) for a scooter having a rear drive wheel (2).  The drive assembly includes an internal combustion engine (3) having a drive shaft (4).  The drive shaft axis (B) is parallel to the drive wheel’s axis of rotation (A).

  

The transmission unit (5) is located between the drive shaft (4) and a propeller shaft (6).  The propeller shaft axis (C) also is parallel to axes A and B.  The transmission unit (5) comprises a continuously variable transmission (7).

The drive assembly (1) also has an electric motor (32), which is connected to the vehicle battery (not shown). 

A control unit responds to input signals and controls the operating mode of the drive assembly.  An all combustion mode provides high performance, and an all-electric mode minimizes fuel consumption.  

The internal combustion engine and electric motor also can be adjusted by the control unit to be connected in series (the combustion engine is only used to charge the battery) or in parallel (both the combustion engine and the electric motor provide drive power).

The MP3 hybrid can be charged by plugging it into a standard electrical socket.  According to the Gas 2.0 article, the MP2 hybrid will be super fuel efficient (141 mpg) with a price tag of only about $8-9,000. 

A common complaint about intellectual property rights (IPR) is that they prevent or reduce access to important technology in the developing world.  A recently published study examined the validity of this claim with respect to climate change technologies and found that patent rights are not an obstacle to transfer of these technologies to developing countries.

The report was commissioned by the Trade Directorates General of the European Commission and co-authored by Copenhagen Economics and The IPR Company and is entitled “Are IPR a Barrier to the Transfer of Climate Change Technology?”. 

The study examined patent protection and ownership data for seven clean energy technologies – waste and biomass, solar, fuel cells, ocean, geothermal and wind – in low-income developing countries and emerging market economies from 1998 through 2008. 

The study shows the distribution of patent rights by country of residence of the patent holder.  According to the report, one simple reason IPR are not a barrier in developing countries is:

there are hardly any patents on these technologies registered in these countries

To the extent the cost of implementing clean energy technologies in developing countries is high, the report says this is more likely to be due to the immaturity of the technologies than to patent rights. 

Contrary to calls for compulsory licensing or other measures to weaken IPR, the report states that relaxing the IP regime for clean technologies in developing countries would not improve technology transfer to these countries.

As to why there are so few clean tech patents in the developing world, the report posits that patent holders do not apply for protection in these countries because poor technological capacities, economic conditions and market size make developing countries unattractive markets.

In emerging markets that do have favorable conditions for implementation of clean technologies and significant numbers of domestically owned patents (the report cites China as a key example), the study finds that improving patent protection could stimulate both domestic innovation and the transfer of technologies from foreign patent holders.

The report sums up its key finding as follows:

In conclusion, the study finds that intellectual property rights do not in themselves constitute a barrier to the transfer of carbon abatement technology from developed countries, neither to low-income developing countries nor to emerging market economies.  Many other non-technological and more economic factors stand int he way of achieving the carbon abatment objectives of low-income countries.

Honeywell International Inc. (Honeywell) and North Carolina LED maker Cree Inc. (Cree) have settled a patent suit that involved infringement claims and counterclaims relating to three LED patents.  The Trustees of Boston University (BU), which also settled, was a counterclaim plaintiff because Cree owns exclusive licenses to two patents owned by the university.

According to a Joint Stipulation of Dismissal filed last month (honeywell_dismissal.pdf), Honeywell, Cree and BU agreed to drop all claims and counterclaims in the suit, and each party will pay its own costs and attorney fees.

In October 2007 Honeywell sued Philips Lumileds Lighting Co. (Philips) and Cree in federal court in Marshall, Texas, alleging that the two LED makers infringed U.S. Patent No. 6,373,188 (‘188 patent). 

The ‘188 patent is 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.

Cree subsequently shot back, accusing Honeywell of infringing U.S. Patent Nos. 5,686,738 and 7,235,819, both relating to gallium nitride semiconductor materials used in LEDs.

This case has not been without drama.  A previous post reported that the law firm of Paul, Hastings, Janofsky & Walker (Paul Hastings), which represented Honeywell, was disqualified from the case in January. 

U.S. Magistrate Judge Charles Everingham ordered that Paul Hastings be disqualified from representing Honeywell in the suit because the firm’s government relations work for the Philip Lumileds affiliate Philips Electronics North American Corporation while representing Honeywell adverse to Philips Lumileds created a concurrent conflict of interest under the American Bar Association model ethics rules (paul_hastings_dq_order.pdf).

Apparently, Honeywell’s infringement case against Philips will continue, but where it will be litigated remains up in the air.  A sealed motion by Philips to transfer the case to the Northern District of California remains pending.

I’m starting to see a slight uptick in lawsuits alleging greenwashing, i.e., making false or deceptive environmental claims (see previous greenwash suit post here).  The latest target is that classic household cleaner, Windex. 

Last month Wayne Koh filed a class action suit in federal court in San Jose, California against SC Johnson & Son, Inc. (“SC Johnson”), accusing the maker of Windex of misleading consumers about the “environmental safety and soundness” of the cleaning product (koh_complaint.pdf).

At issue is SC Johnson’s use of its GREENLIST trademark (below), and in particular, its placement of the mark on the Windex product labels. 

According to the complaint, the reverse side of the product label states:

Greenlist is a rating system that promotes the use of environmentally responsible ingredients.

The complaint alleges that the GREENLIST mark and accompanying statement falsely imply that the Greenlist designation is administered by a neutral third party when, in fact, it is owned by SC Johnson. 

Moreover, SC Johnson is representing that Windex is made with natural and environmentally safe ingredients, the complaint states. but the company has not changed the ingredients of the cleaning product.  According to the complaint, these ingredients include ethylene glycol n-hexyl ether, which is “not naturally derived and poses serious danger, including death, if ingested by wildlife and small children.”

The complaint further alleges that products bearing the GREENLIST mark contain some of the same “non-natural toxic chemicals harmful to the environment and animals” as SC Johnson products without the label.

The complaint states several California state law claims relating to unfair competition, false advertising, unlawful business practices and consumer protection violations.

SC Johnson owns two U.S. trademark registrations and two pending applications, one each for the word mark GREENLIST and the GREENLIST design mark for various cleaning products.  They are Registration Nos. 3,518,048 and 3,522,370 and Application Serial Nos. 77/039,858 and 77/142,889.  None of the registrations or applications is for a certification mark. 

Whether SC Johnson is truly greening its cleaning products I can’t say, but I don’t see any outright falsehoods here.  The brief explanation of Greenlist on the product label seems to be literally true.

Also SC Johnson’s Greenlist webpages (see here and here) state that SC Johnson developed the ratings system and that the company itself is screening its ingredients because “we plan to measure ourselves against a much higher internal standard.”