GreenShift-ing Focus to Pre-Grant Damages in Ethanol Processing Patent Suit

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GS CleanTech Corporation (GS), a wholly owned subsidiary of GreenShift Corporation, is a New York company that develops technology relating to energy efficient ethanol production processes.

GS owns U.S. Patent No. 7,601,858 (‘858 Patent), entitled “Method of processing ethanol byproducts and related subsystems” and directed to methods of recovering oil from byproducts of ethanol production.

Dry milling is a popular method of producing ethanol by fermentation of the starch in corn or other grains.  However, this method creates a waste stream comprised of byproducts called whole stillage.

According to the ‘858 Patent, whole stillage contains valuable oil but prior processes for recovering this oil have been expensive or inefficient.

GS’s patented method includes mechanically separating the whole stillage into distillers wet grains and thin stillage and then running the thin stillage into an evaporator to form a concentrated byproduct, or syrup.  The syrup is fed through a second centrifuge, which separates usable corn oil from the syrup.

The ‘858 Patent issued on October 13, 2009.  The same day, GS filed suit in federal court in Manhattan accusing New Jersey-based separator and decanter maker GEA Westfalia Separator, Inc. (Westfalia) and multiple as yet unnamed defendants of contributory infringement and inducing infringement of the ‘858 Patent. 

According to the complaint (greenshift-complaint.pdf), Westfalia sells centrifuges for corn oil extraction and directs its customers to use the methods taught in the ‘858 Patent.

Because the suit was filed upon patent issuance, GS’s recoverable damages are quite limited.  So GS is claiming provisional patent rights under Section 154(d) of the patent statute, which allows recovery of a reasonable royalty if the infringer had actual notice of the published patent application and the claims of the issued patent are substantially identical to the originally published claims.

This strategy demonstrates the importance of promptly notifying any potential infringers as soon as your patent application publishes, which is 18 months after filing in the U.S.

Thanks again to the Cleantech Litigation blog for the head’s up about this case.

Eric Lane Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.