Archive for November, 2010

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Federal Circuit Rejects A123 Bid to Head Back to Boston

November 23rd, 2010


In a previous post, I discussed the patent litigation between Boston area lithium ion battery maker A123 Systems Inc. (A123) and Canadian utility Hydro-Quebec (H-Q).

A123 initially brought a suit in April 2006 against H-Q in federal court in Boston as a declaratory judgment (DJ) action for non-infringement and invalidity of U.S. Patent Nos. 5,910,382 (‘382 Patent) and 6,514,640 (‘640 Patent).  H-Q is the exclusive licensee of the ‘382 and ‘640 Patents.

The ‘382 and ‘640 Patents are entitled “Cathode materials for secondary (rechargeable) lithium batteries” and relate to host materials for use as electrodes in lithium ion batteries.  The patented materials provide a larger free volume for lithium ion motion that allows higher conductivity and therefore greater power densities.

In September 2006 the court dismissed the case without prejudice when the two patents began re-examination proceedings in the U.S. Patent and Trademark Office (PTO).  

Also in September 2006, H-Q and the University of Texas (UT), which owns the ‘382 and ‘640 Patents, sued A123 for infringement of the patents in the Northern District of Texas.

In spring 2009, after the PTO completed its re-examination of both patents, A123 asked the court in Boston to reopen its DJ action.  A123 argued that the Boston case should take precedence over the pending Texas action because it was the earlier filed case.

However, the court ruled that the Boston action could not be reinstated because A123 had failed to join the University of Texas (a123_memorandum.pdf).

The court held that UT was a necessary party as the owner of the patents-in-suit because UT had not transferred all substantial rights in the patents to H-Q (the H-Q license contained some field of use restrictions).

Not only was UT not joined by A123, but UT could not be joined as a defendant in the Boston suit, the court held, because it is immune from suit as a state university.  Under the Eleventh Amendment, a federal court cannot hear a suit against a state without the state’s consent.

A123 appealed to the Court of Appeals for the Federal Circuit (the appellate court that hears all patent appeals).

Earlier this month the Federal Circuit affirmed the district court decision, denying A123’s bid to re-open its declaratory judgment action in its home court in Boston.

On appeal, A123 challenged the district court’s determination that UT had not transferred all substantial rights to the patents to H-Q, arguing that in a prior lawsuit and in a letter to A123 H-Q held itself out as holding all rights to the patents, including the right to enforce the patents.

The Federal Circuit disagreed and found the evidence supported the district court’s determination.  In particular, witness testimony indicated that H-Q holds an exclusive license to two fields of use claimed in the patents:

(1) an exclusive license to manufacture, use, sell, import, and offer for sale rechargeable batteries with a solid electrolyte, gelled, plasticized or not plasticized, and

(2) an exclusive and worldwide license to manufacture and sell lithium iron phosphate (“LiFePO4”) in bulk quantities for all applications, including, but not limited to, secondary batteries. 

Pursuant to the license, UT retained the following rights:

to license other parties in all other patented fields of use, including (1) the production, use, and sale of rechargeable batteries, including those with lithium manganese, lithium titanium, and lithium nickel cathod ematerial, having a liquid electrolyte and (2) the use of lithium iron phosphate with liquid electrolytes.

The Federal Circuit found no representations by H-Q that contradicted this testimony and noted that even if there had been, “such a unilateral representation could not alter the UT’s own rights in the patents.”

On Eleventh Amendment sovereign immunity, the Federal Circuit rejected A123’s argument that UT waived its immunity by filing suit against A123 for infringement of the patents in Texas.  The court reviewed its pertinent precedent on this issue, which holds:

where a waiver of immunity occurs in one suit, the waiver does not extend to an entirely separate lawsuit, even one involving the same subject matter and the same parties 

So A123 is stuck as a defendant in Texas, where the infringement action is moving forward.  In a scheduling order issued yesterday (scheduling_order.pdf), the court set the claim construction hearing for early December.

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USPTO Announces Extension and Expansion of Green Technology Pilot Program

November 16th, 2010


Last week the U.S. Patent and Trademark Office (USPTO) formally announced its plan to extend and expand the Green Technology Pilot Program, which provides accelerated examination for patent applications relating to green technologies.

According to the Notice, the program will be extended to December 31, 2011; it was previously scheduled to end December 8, 2010. 

The USPTO has also made a significant eligibility change, expanding the program to include green patent applications filed on or after the December 8, 2009 program launch date; previously, only applications filed before that date were eligible.

So, as of the November 10, 2010 effective date, any green patent application that has not yet begun examination is eligible for the fast tracking program.

The Notice states:

Initially, participation was limited to applications filed before December 8, 2009. The USPTO is hereby expanding the eligibility for the pilot program to include applications filed on or after December 8, 2009. The program is also being extended until December 31, 2011. These changes will permit more applications to qualify for the program, thereby allowing more inventions related to green technologies to be advanced out of turn for examination and reviewed earlier.

With this change, the eligibility requirements are as follows:

the application is any non-reissue, non-provisional utility application for which a first office action has not been issued;

the application has three or fewer independent claims, 20 or fewer total claims and no multiple dependent claims (the applicant can file a preliminary amendment to bring the application in compliance with this requirement);

the application claims a single invention directed to environmental quality, conserving energy, developing renewable energy resources or reducing greenhouse gas emissions; and

the applicant must request early publication of the application.

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Sipco Patent Suit Targets Smart Grid and Energy Management Solutions Developers

November 6th, 2010

Sipco LLC (Sipco) is an Atlanta, Georgia-based developer of wireless mesh technology.  In a previous post, I wrote about Sipco’s patent infringement suit targeting Florida Power & Light and its smart meter rollout in Miami-Dade County.

Last month Sipco sued various companies that offer smart meters, lighting products, home and building automation systems and energy management solutions for patent infringement in the Eastern District of Texas. 

The named defendants are Energate, Ecobee, Rainforest Automation, SmartSynch, AMX Corporation, SimpleHomeNet and CentraLite Systems.

The complaint (sipco-energate-complaint.pdf) mentions only a few products by name, including the AMXhome control system and CentraLite’s Jetstream lighting control system.

The asserted patents are U.S. Patent Nos. 7,103,511, 6,914,893 and 7,697,492, which relate to remote monitoring and control systems.

The ‘511 Patent is directed to a wireless communication system for use in an automated monitoring system. 

Claim 1 of the ‘511 Patent is directed to a system comprising a plurality of wireless transceivers, each having an associated unique identifier, that receive sensor data from remote devices and transmit the unique identifier and the sensor data signal to a site controller that passes on the information to a wide area network and ultimately to a host computer.

The ‘893 Patent description is representative of the inventions in the asserted patents and discloses a control system (200) that includes several stand-alone transceivers (211, 213, 215, 221) and integrated transceivers (212, 214, 216, 222, 224). 

The integrated and stand-alone transceivers are configured to receive an incoming RF transmission (from remote devices) and to transmit an outgoing signal.  


Local gateways (210, 220) receive remote data transmissions from the integrated or stand-alone transceivers, analyze the transmissions, convert them into TCP/IP format for internet transmission and communicate the transmissions via wide area network, or WAN (230).

According to the ‘893 Patent, this system improves upon prior systems that required the development and installation of an application-specific local system controller and were susceptible to a single point of failure if the local controller breaks down. 

I suspect we’ll see more of Sipco and its patents in the near future.  With each new lawsuit, Sipco further establishes itself and its remote monitoring systems patent portfolio as a force to be reckoned with in the burgeoning smart grid and energy management solutions industry.