In a previous post, I discussed a greenwashing case against California LED lamp maker Lights of America (LOA). 

In that case, the U.S. Federal Trade Commission (FTC) accused LOA of making false or misleading statements about its products.  The disputed statements allegedly misled consumers about the ability of certain LOA LED lamps to replace incandescents and included false claims of brightness and product life.

In that post I noted that the case was an example of an anti-greenwashing public enforcement action, one of the two primary legal means for combatting alleged greenwashers.

Last month LOA became ensnared in the second type of anti-greenwashing activity, as an individual named Nathaniel Schwartz filed a consumer class action against the company.

The class action complaint (Schwartz-LOA-Complaint), filed in federal court in Los Angeles, cites the same allegedly false advertising claims as the FTC complaint (ftc-lights_of_america_complaint.pdf).  Schwartz bolsters his claims with data from testing performed by Lighting Science, Inc. on behalf of LOA and from independent testing by the U.S. Department of Energy (DOE).

Specifically, Schwartz accuses LOA of making misleading equivalency claims about how its LED lamps compare with various wattage incandescent bulbs. 

According to the complaint, the claims for 20/25 watt replacements and 40/45 watt replacements are false because LOA’s LED lamps produce significantly less light output than a typical incandescent light bulb at those wattages.

Schwartz accuses LOA of continuing to make such equivalency claims even after becoming aware of the DOE test results.

The complaint also alleges that LOA overstated the light output of several products by representing that the LED lamps produce a specific level of light output in lumens when  the company’s own tests demonstrated that they produce significantly less light.

Finally, Schwartz accuses LOA of making unsubstantiated claims about the number of hours its LED lamps would last.  While LOA claimed that many of its LED recessed lamps will last 20,000 or 30,000 hours, the complaint alleges that the company did not test any of its products to support the lifetime claims and the DOE testing proved the claims to be false.

The complaint lists several California state claims such as false advertising and unfair and deceptive business practices and requests that the court issue an injunction to stop LOA from engaging in the alleged unfair practices. 

Schwartz has also requested restitution and disgorgement of all profits LOA made through the alleged unfair practices and says the amount of money at stake in the case is over $5,000,000.

 

One of the common hurdles green brand owners have to overcome to protect their brands is U.S. trademark law’s proscription against registration of marks that are “merely descriptive” of the goods or services. 

The rationale for this rule is that registering a generic or descriptive term would restrict competitors from conveying information about their goods or services.

Many of the terms used to signal environmentally friendly aspects of goods or services - terms such as “green” and “eco-” – are so immediately identified with those characteristics that they have become legally incapable of the distinctiveness required for U.S. trademark registration.

Powertech Industrial Ltd. (Powertech), a Taiwanese company, recently ran into this problem when it sought registration of the mark HYBRID GREEN UPS for “power supplies; mobile phone battery chargers; mobile phone battery charger stations; battery chargers; universal power supplies; power saving adapters; electric storage batteries; uninterruptible power supplies; AC/DC converters; power source stable adapters” in Class 9 (App-No-77176134).

After United Parcel Service (UPS) opposed registration, the Trademark Trial and Appeal Board (Board) ruled that the mark is unregistrable as merely descriptive of Powertech’s electrical components (Powertech-Opinion).

Powertech had disclaimed the “UPS” element of the mark because it is a commonly used acronym for “uninterruptible power supply” (or “system”) and is therefore a generic designation for the goods.

As to the remainder of the mark, one key piece of evidence of descriptiveness was a Powertech patent that uses the term “hybrid green uninterruptible power system” as a technical term of art to refer to the battery system:

when AC utility power is interrupted or an irregular voltage occurs, the secondary battery releases power, and the inverter inside the hybrid green uninterruptible power system inverts power from the secondary battery into AC power so that the hybrid green uninterruptible power system can provide the AC power to the external load via the AC power output ports and simultaneously provide one or more sets of additional DC power and the DC power output ports (emphasis added)

The Board also noted that a Powertech web page defined the terms “HYBRID” and “GREEN” with reference to specific features of the power system as providing AC and DC output simultaneously and energy savings, respectively.

Accordingly, the Board held the mark merely descriptive because Powertech is using the well understood terms “HYBRID” and “GREEN” consistently with the common meanings of the terms:

Applicant’s adoption and usage of the words “hybrid” and “green” within “Hybrid Green UPS” is totally consistent with the commonly understood meanings of these respective words.  The word “hybrid” is often used to describe a system consisting of two components performing similar functions.  The word “green” is often used to describe something that is environmentally-friendly . . . it appears from Applicant’s own literature that its involved devices function in both the AC and back-up DC modes – the “hybrid” characteristic – and that the energy efficiencies of these products will tend to preserve environmental quality – or be “green.”

Another “GREEN” mark bites the dust.

I am very pleased to announce the release of my book on green IP.  Entitled Clean Tech Intellectual Property:  Eco-marks, Green Patents, and Green Innovation, the book discusses many of the stories and issues I’ve been covering in this space over the years.

The book is divided into four sections.  “Counseling Clean Tech” illustrates how clean tech companies can obtain and leverage green patents to create and expand their businesses.  This section includes strategies and case studies relating to drafting and prosecuting green patent applications, building green patent portfolios, and licensing clean technologies.

The second section, “Clean Tech in Court,” provides detailed accounts of the major green patent litigation stories of the past two decades and examines their effects on the clean tech industry.

Section three covers “Green Branding, Greenwashing, and Eco-mark Enforcement,” including green trademark prosecution and litigation as well as green branding issues from both the brand owner perspective and a consumer protection standpoint.

The book closes with a section on “Green Patent Policies, Initiatives, and Debates,” which includes a detailed review of clean tech IP policies and a critical examination of the international debate in the climate change treaty negotiations over the role of IP in efforts to curb global warming.

In an introductory chapter entitled “Clean Tech IP is for Real” I try to highlight the unique aspects of this field and make the case that green IP is a discrete area of law and policy worthy of study, practice, and expertise.

The book is the culmination of over two years of work, including about 18 months of intensive research and writing.  I hope it will impart some useful information and insights about clean tech IP and serve as a valuable resource for those interested in this emerging field.

Clean Tech Intellectual Property:  Eco-marks, Green Patents, and Green Innovation is now available for purchase through the Oxford University Press web site here and on Amazon.com .

Stay tuned for a new page on this site with the book information.

Valence Technology (Valence) is an Austin, Texas, energy storage technology developer that makes lithium iron magnesium phosphate battery modules.

According to this piece in the Austin Business Journal, Valence recently won a four-year patent infringement suit against Montreal-based Phostech Lithium (Phostech).  See also the Valence press release (Valence_press_release).

The patent-in-suit was Canadian Patent No. 2,395,115 (‘115 Patent), entitled “Preparation of lithium-containing materials. 

The ‘115 Patent relates to lithium mixed metal phosphates for advanced batteries.  The materials described in the patent include LiFe_0.9Mg_0.1PO₄ and are used as the active material in a battery cathode.

According to the ‘115 Patent, this material has a better charge capacity than existing lithium cathode materials.  This is demonstrated in the different specific capacity between the LiFePO₄, plotted in FIG. 2 of the patent, and the new material, LiFe_0.9Mg_0.1PO₄, shown in FIG. 5.

The ‘115 Patent explains that FIG. 5 (LiFe_0.9Mg_0.1PO₄) shows a well defined and sharp peak at about 150 mAh/g (milliamp hours per gram), while FIG. 2 (LiFePO₄) shows a shallow slope leading to a peak at about 123 mAh/g.

This means that the Fe-phosphate plotted in FIG. 2 provides 123 mAh/g compared to its theoretical capacity of 170 mAh/g, for only 72% specific capacity.  The improved Fe/Mg-phosphate material provides 150 mAh/g compared to a theoretical capacity of 160 mAh/g, which is 94% specific capacity.

According to Phostech’s press release (Phostech_press_release), the Federal Court of Canada ordered Phostech to cease its current production and sale of lithium iron phosphate.

 

I’ll be speaking at the Licensing Executives Society Silicon Valley Chapter meeting next week as part of a panel on green IP.

Entitled “People Driving Cleantech:  IP Trends in the Renewable Energy Generation, Storage, Efficiency, Transportation, and Recycling Markets,” the meeting will explore the role of IP in the technological development and commercialization of some key clean tech subsectors.

Joining me on the panel will be Matt Rappaport, co-founder and managing director of patent analytics firm IP Checkups, Efrat Kasznik, president of IP consulting firm Foresight Valuation Group, and Aaron Enz, a partner at Watershed Capital, a corporate financial advisory firm.  Eric Wesoff of Greentech Media will be the moderator.

My presentation is called “Global Green Patenting:  Risks and Opportunities from the Fast Track to the Highway,” and will review the anti-patent policies proposed by the UN and developing countries in the recent international climate change treaty talks.  Such policies seek to weaken or eliminate green patents due to a belief that patents act as a barrier to international transfer of clean technologies.

My talk will highlight significant instances of clean tech transfer that belie the notion that green patents are acting as such a barrier. 

I will also provide an overview of some of the exciting opportunities in international green patenting such as the fast track programs offered by the United States, the UK, Korea, and others, which expedite processing and examination of clean tech patent applications.

The meeting will be held next Wednesday, March 23, 2011, from 11:30AM – 2:00PM at Santa Clara University.  More information about the event and registration info can be found here.

GE, already dominant in the U.S. wind turbine market, is getting into the wind tower business, with a recent announcement that it would buy Wind Tower Systems (Wind Tower). 

Wind Tower is a Park City, Utah, company that designs towers for mounting utility scale wind turbines.  While most existing utility-scale wind turbine towers stand at 65-70 meters, the company’s modular tower technology and lift system enable taller towers (100 meters high). 

As this Greentech Media piece notes, taller towers permit longer turbine blades, which means more power per turbine.

Wind Tower’s product offerings include the Space Frame Tower and the Hi-Jack System for assembly and disassembly.  The company owns at least one U.S. Patent and several U.S. patent applications relating to its tower structure and lift system technology.

U.S. Patent Application Publication No. 2010/0226785 (‘785 Application) is entitled “Structural tower” and is directed to a wind tower assembly that includes composite damping members or struts to dampen wind-induced vibrations in the tower structure.  Embodiments of damping members contemplated by the ‘785 Application include a viscous or hydraulic damper and a spring element.  

The Hi-Jack System is protected U.S. Patent No. 7,877,934 (‘934 Patent), which issued last month.  Entitled “Lifting system and apparatus for constructing wind turbine towers,” the ‘934 Patent is directed to apparatus and methods for erecting a wind tower and turbine assembly.

The lifting apparatus (320) includes a pair of hydraulic rams (370) connected to telescoping members (375) of each of first and second lifting trusses (330, 331) via each hydraulic ram’s cylinder unit (371).  When the hydraulic rams (370) are retracted, the transverse beam (345) is positioned fore of the top bay assembly (317).

 

According to the ‘934 Patent this position facilitates hoisting of a turbine, after which the hydraulic rams (370) are extended, causing the lifting apparatus (320) to pivot.  This raises the transverse beam (345) above the top bay assembly (317) to a position where the turbine can be lowered and secured to the top bay assembly.

U.S. Patent Application Publication No. 2010/0236161 (‘161 Application) focuses on the hoisting part of the process.  The ‘161 Application is entitled “Lifting system and apparatus for constructing and enclosing wind turbine towers” and is directed to Wind Tower’s gin pole lifting component.

According to the ‘161 Application, a ginpole (601) can be used together with the lift apparatus (660) to lift or control the lift of the turbine or blade assembly (675) and can be used raise or lower the lifting apparatus (660) itself.

With GE scooping up Wind Tower’s IP relating to wind turbine assembly technology, Philip Totaro’s wind patent trendspotting piece predicting the increased importance of “‘on-site’ assembly procedures” looks very prescient.

In a previous post, I wrote about a patent infringement suit between Danish biopharm rivals Novozymes and Danisco, which are both active in developing enzymes used in production of biofuels.

In the suit, Novozymes has accused Danisco of infringing U.S. Patent No. 7,713,723 (‘723 Patent) by selling alpha amylase enzymes including Danisco’s GC358 product.  See the complaint here: novozymes_complaint.pdf.

The ‘723 Patent is entitled “Alpha amylase mutants with altered properties” and relates to variants of certain alpha amylases that exhibit altered stability under high temperatures, low pH and other conditions.  The patented variants can be used for starch conversion in ethanol production.

Last month Judge Barbara B. Crabb of the U.S. District Court for the Western District of Wisconsin denied Danisco’s motion for summary judgment of invalidity of the ‘723 Patent. 

In the Opinion (Novozymes-Order), Judge Crabb rejected Danisco’s argument that the patent is invalid for insufficient written description. 

A U.S. patent must have an adequate written description to be valid.  This means the patent’s specification (which includes the description and figures, but not the claims) must convey to a person skilled in the relevant technical field that the inventor actually invented and “had possession” of the claimed invention.

Danisco argued that the ‘723 Patent – directed to a substitution of an amino acid at position 239 in the alpha-amylase protein – was inadequate because the written description lists position 239 as one of 33 possible positions for an “alteration” and lists a substitution as just one possible type of alteration.

According to Danisco, that extensive variability means the ‘723 Patent identifies 8.589 x 10⁴² possibilities for experimentation to arrive at the claimed invention.

Despite “doubts” about the adequacy of the written description, Judge Crabb concluded that Danisco did not meet its burden of proving invalidity as a matter of law. 

The opinion notes that Novozymes put forth expert testimony and other evidence sufficient to create an issue of fact as to whether a person of skill in the art would interpret the specification of the ‘723 Patent as disclosing that substitutions at each of the 33 positions would lead to improved stability of the alpha amylase.

The decision was a close one for Judge Crabb, who stated in the opinion “[i]t is not without hesitation that I am denying defendants’ motion.”  This will be an interesting case to watch, and one that could go down to the wire.

A good clean tech transfer tool recently got a little bit better. 

Last month the U.S. Department of Energy (DOE) announced that its Energy Innovation Portal, an online tool designed to link DOE energy technologies with potential licensing and commercialization partners, now offers business-friendly descriptions of over 300 technologies.

These marketing summaries provide overviews of the particular innovations, with each including a description of the technology, its benefits, and a list of possible applications and industries in which it could be applied.

The Energy Innovation Portal includes 11,721 patents and 3,555 patent applications relating to a wide variety of energy technologies developed by DOE national laboratories and other research institutions. 

There have already been notable success stories involving some of these patents, including the lithium-ion batteries used in the Chevy Volt, which leverage several Argonne National Laboratory patents directed to composite cathode materials.

It is also increasingly common for clean tech startups to jump start their businesses by licensing in technology from a national lab.  

For example, PrimeStar Solar, a Colorado startup, is developing cadmium-telluride thin-film photovoltaics using technology licensed from the National Renewable Energy Laboratory.  Similarly, Ampulse, also in Colorado, has licensed thin-film deposition technology from both NREL and Oak Ridge National Laboratory.

Getting clean technologies into the hands of those willing and able to commercialize them is critically important, and the Energy Innovation Portal is playing a major role in this process.