Green Patent Blog is on vacation.

Happy Holidays!

 

 

 

 

In a good news / bad news press release, the U.S. Patent and Trademark Office announced last week that its Green Technology Pilot Program would be extended for three months but “will soon draw to a close.”

Previously set to expire on December 31, 2011, the program is being extended through March 30, 2012 or until 3,500 applications are accepted onto the fast track (read more in this post at Sustainable Marks).

As of December 5, 2011, the most recent report summary date, 2,913 petitions for the program have been granted, and 373 are awaiting decision.

To be eligible for the fast track program, the application must satisfy the following criteria:

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.

 

Principle Power is a Seattle, Washington-based renewable energy technology company that developed WindFloat, an offshore wind power turbine and platform.  The platform can be assembled on shore and then towed to a site offshore where it is moored and connected to a power station. 

Principle Power recently deployed its first WindFloat system off the coast of Portugal, the first offshore turbine to be located in open Atlantic waters (read more about the first deployment here and here).

The WindFloat technology is described in U.S. Patent Application Publication No. 2011/0037264, entitled “Column-stabilized offshore platform with water-entrapment plates and asymmetric mooring system for support of offshore wind turbines” (‘264 Application).

The platform comprises columns (102, 103) interconnected with a truss structure composed of main beams (115), bracing beams (116), and cross beams (117).  A wind tower (111) is attached to one of the base columns (102, 103).

A wind turbine (125) is attached to the wind tower (111).  At the base of the columns are horizontal water-entrapment plates (107).  The submerged plates (107) are designed to provide hydrodynamic added-mass and dampening, resulting in reduced platform motion - particularly in heavy seas. 

The turbine platform can also include active ballast systems for stabilization.  The columns (102,103) can be hollow and and house the active ballast system, which transfers water between tanks within the columns.  The active ballast system is designed to keep the mean position of the platform horizontal and to keep the turbine as upright as possible.

According to Principle Power, unlike conventional offshore wind turbines, the stabilization features of the WindFloat allow the platform to withstand the high wind and wave energy found in deeper waters.  Wind turbines located far from shore overcome disadvantages of their close-to-shore counterparts because they do not block the shore view and lessen navigational obstructions and potential hazards to water vessel and aircraft while tapping into previously inaccessible wind resources.

David Gibbs is a contributor to Green Patent Blog.  David is currently in his third and final year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Geology from the University of California, Berkeley.

Several green patent lawsuits (and one green copyright suit) have been filed in the last several weeks in the areas of LEDs, hybrid vehicles, wastewater treatment, energy management, and biodegradable materials.

 

LEDs

Bluestone Innovations Florida, L.L.C. v. Formosa Epitaxy

Bluestone Innovations (Bluestone), a Florida-based patent licensing company, recently filed a Complaint in the U.S. District Court for the Middle District of Florida against Formosa Epitaxy (Formosa), a Taiwanese corporation.

Bluestone alleges that Formosa engaged in the manufacture, importation, offer for sale, and sale of LED semiconductor devices and other optoelectric devices, such as gallium nitride (GaN) LED wafers and chips, and indium gallium nitride (InGaN) LED wafers and chips.

The complaint alleges these activities infringe U.S. Patent Number 6,605,832, entitled “Semiconductor Structures Having Reduced Contact Resistance”.  Bluestone is seeking a permanent injunction and damages, including treble damages and attorney fees.

Wastewater Treatment

Polylok, Inc. v. Bear Onsite

A recent post discussed a suit between wastewater treatment rivals Polylok and Bear Onsite in Connecticut in which Polylok asserted infringement of U.S. Patent Number 6,129,837, entitled “Waste water treatment filter including waste water level control alert device” (’837 Patent). 

The ’837 Patent is directed to a filtration device for a waste water treatment tank with a level alert device to provide an alarm when the filter becomes plugged.  The claims are directed to particular means for mounting the alert device to the filter.

Bear Onsite recently responded with a declaratory judgment action (Petition for Declaration of Rights).  Specifically, Bear Onsite is seeking a declaratory judgment of invalidity, unenforceability and non-infringement of the ‘837 Patent.

 

Hybrid Vehicles

KGR IP L.L.C. v. Ford Motor Company
KGR IP L.L.C. v. Honda Motor Company

KGR recently filed two complaints in the U.S. District Court for the Northern District of California (KGR_IP-Ford_Complaint; KGR_IP-Honda_Complaint). 

The complaints allege that both Ford and Honda are infringing U.S. Patent Number 6,639,614, entitled “Multi-variate data presentation method using ecologically valid stimuli” (‘614 Patent).  The ‘614 Patent relates to visual display of data using “ecologically valid” icons.

KGR alleges infringement of the ‘614 Patent in the Ford Fusion Hybrid vehicles and Honda vehicles that utilize the Eco Assist function.  KGR is seeking injunctive relief and damages.

 

Fernandez v. Toyota Motor Corporation

Dennis Fernandez, an individual inventor, recently filed a Complaint against Toyota Motor Corporation, Toyota Motor Sales, U.S.A and Toyota USA (collectively “Toyota”), alleging patent infringement.
Fernandez alleges Toyota is infringing U.S. Patent Numbers 7,374,003, 7,575,080, and 7,980,341, each entitled “Telematic Method and Apparatus with Integrated Power Source”.

The complaint states that Toyota is using the accused devices in its Prius II hybrid vehicle. The complaint seeks damages and attorney fees.

 

Biomaterials; Recycling & Waste Management

Frito-Lay North America v. Innovia Films Limited

Frito-Lay filed a Complaint against Innovia Films, Inc. (Innovia), a manuafcturer of bio-based films, on November 23, 2011 seeking declaratory relief over Frito-Lay’s ownership of two patents and two patent applications.

The complaint relates to recent actions commenced by Innovia against Frito-Lay in both the U.K. and Europe.  In that litigation, Innovia claims that Frito-Lay breached a confidentiality agreement and used information gained during confidential meetings to develop biodegradable packaging.  Innovia claims the technology led to Frito-Lay’s U.S. Patent Numbers 7,951,436 and 7,943,218 and U.S. Patent Applications 11/848,775 and 12/716,033.

Frito-Lay contends that it did not acquire any technology from Innovia and that development of its degradable bags was conducted independently.  Frito-Lay states that its “scientists and engineers discovered and invented novel flexible film packaging that maintains certain barrier properties and is made up of several layers of films, including a biodegradable ‘bio-based’ layer.”

 

Smart Grid / Energy Management

Opower, Inc. v. Efficiency 2.0, LLC

In a rare clean tech copyright dispute, Opower, Inc. (Opower) recently filed a copyright infringement Suit against Efficiency 2.0, LLC (Efficiency 2.0), a New York energy efficiency software company.

Opower produces Home Energy Reports, paper reports mailed to residents which show their home energy consumption in relation to similarly situated neighbors.  Opower’s Home Energy Reports were registered with the Copyright Office in September 2009 as Registration No. VA0001692228 and in October 2011 as Registration No. TX0007435604.

According to the complaint, Efficiency 2.0’s Energy Savings Reports are nearly identical to Opower’s copyrighted reports.  Opower claims the similarities include “overall layout and blocking, use of open space, use of language, use of font, bolding, accents and color, as well as selection and presentation of specific graphics and information.”

Opower is seeking damages, and a preliminary and permanent injunction barring Efficiency 2.0 from using Opower’s copyrighted reports.

David Gibbs is a contributor to Green Patent Blog.  David is currently in his third and final year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Geology from the University of California, Berkeley.

 

Specialized Technology Resources (STR) is a Connecticut-based company that makes plastic sheeting material for encapsulating solar cells. 

In the 1990’s, STR engaged in about five years of intensive R&D to develop a proprietary method to produce a “low-shrink” ethylene vinyl acetate (EVA), which avoided shrinkage of the resulting encapsulant.

STR began manufacturing and selling its low shrink EVA in late 1996 and subsequently grew to hold about 25% of the global market for EVA encapsulants.

James P. Galica was the director of STR’s materials science division during the low shrink EVA R&D project and oversaw the project team.  Galica left STR in 2005 and joined JPS Elastomerics in 2006.

Shortly thereafter, JPS began producing and selling an encapsulant product using a method substantially identical to the one developed by STR.

STR sued JPS and Galica in state court in Massachusetts for breach of Galica’s employment contract, misappropriation of trade secrets, and violation of the state’s unfair trade practices law. 

The trial judge, contrary to the jury’s findings, held that JPS and Galica misappropriated STR’s trade secret and thereby engaged in unfair trade practices.  The trial court enjoined JPS from producing low shrink EVA for five years, and the defendants appealed the decision.

Recently, a Massachusetts Appeals Court affirmed (JPS_Decision) the trial judge’s holding of liability on trade secret misappropriation and violation of the Massachusetts unfair trade practices statute. 

The appeals court agreed the evidence demonstrated that it was Galica’s knowledge of the causes of shrinkage, gained from STR’s trade secret method, which yielded the low shrinkage properties in JPS’s process:

Prior to Galica’s employment by JPS, JPS did not manufacture or produce EVA by any means.  Prior to development of its trade secret method, STR produced EVA by contentional methods, but the resulting product did not have low shrink characteristics.  The trial judge found that, under Galica’s supervision, JPS was able to modify its production processes in a manner which utilized [STR’s] discovery about the causes of shrinkage, but which employed adjustments to the production sequences different from those incorporated in the particular method which constituted STR’s trade secret method.

Thus, the 5-year injunction was justified:

Because the method developed by JPS derived from specialized knowledge brought by Galica from STR to JPS, and particularly because the evidence suggested that JPS would not have been able to develop such a method independently, the judge’s order enjoining JPS from production of low shrink EVA by any means for a period of five years (a period equivalent to the time STR spent in development of its trade secret method) was justified.

 

In addition to the high legal fees and exposure to potentially hefty damages payouts that accompany allegations of intellectual property infringement, such lawsuits can also be dark clouds over defendants, hampering their ability to do business.

A salient example of this in clean tech is the news that Mainstream Renewable Power (MRP) has ditched Chinese wind turbine maker Sinovel and is looking to alternative turbine suppliers for the 1GW of wind farm projects it has planned in Ireland.

The move by MRP comes in the wake of two IP infringement lawsuits filed by American Superconductor (AMSC) against Sinovel in China.  

In that litigation AMSC has accused Sinovel of copyright infringement and theft of trade secrets in connection with allegedly stolen wind turbine control source code.

This Recharge News piece notes that an MRP spokesman said the company is “fully aware” of the legal dispute, and the article attributes the switch by MRP to the litigation:

MRP’s decision is the clearest evidence yet of the potential damage Sinovel faces in Western markets as a result of its legal battle with AMSC, which is pursuing the turbine supplier in several Chinese courts for $1.2bn in compensation and damages over alleged intellectual property (IP) infringement and unpaid bills.

This is the not the first time allegations of IP infringement have hurt the business of a wind turbine supplier.  Mitsubishi has claimed that GE’s accusations of infringement of several variable speed wind turbine patents virtually shut down its U.S. business.

According to Mitsubishi’s court filings (mitsubishi_antitrust_complaint.pdf), its $2 billion in annual U.S. sales of variable speed wind turbines dropped to zero after initiation of the first patent infringement suit by GE in early 2008.

Mitsubishi may have begun to recover, however.  Windpower Monthly recently reported that utility Duke Energy has ordered 202 MW of the accused 2.4 MW turbine from Mitsubishi for a wind project in Texas (see my previous post here). 

The article says the Duke order is the first since the advent of the patent dispute with GE.

But it’s clear that even before any ultimate infringement verdict, pending green patent litigation can have serious ramifications outside the courtroom.

 

Some recent green tech articles (e.g., this Ecogeek piece) have covered a mobile wave power system being developed by the Fraunhofer Center for Manufacturing Innovation (FCMI), a Boston applied research institution.

FCMI’s system is a large ship or power barge fitted with a vast amount of storage capacity such as advanced batteries integrated with wave energy generators.  The barge would go out to sea, deploy the wave energy generators in the water to charge the batteries, then withdraw the generators and return to port to connect the fully charged batteries to the grid.

FCMI and Boston University co-own International Application WO 2011/060183, entitled “System for wave energy harvesting employing transport of stored energy” (‘183 Application).

The ‘183 Application is directed to systems and methods of wave energy harvesting comprising a vessel (10-I) having a vessel body (33), which includes the basic ship features as well as a wave energy harvesting apparatus carried by the body (33).

The wave energy harvesting apparatus includes buoys (34) and mechanical linkages (36) connecting the buoys (34) to the vessel body (33).  In certain embodiments, the buoys (34) are “heaving” buoys which float in the water and rise and fall with the movement of the waves (arrow 38 indicates wave direction).

The vessel (10-I) is anchored or otherwise moored at a harvesting location.  The heaving of the buoys (34) is translated by linkages (36) to corresponding mechanical motion on the vessel body (33), which is then converted into a form of storage in the batteries carried by the vessel body (33).

Figure 1 below shows an overview of the method, which includes several modes.  In the harvesting/storing mode (12), wave energy is absorbed and converted into stored energy. 

In the transporting mode (14), the vessel travels to a releasing location, where, in releasing mode (18), the stored energy is used to generate electricity provided to an electrical grid (20).

Finally, in the returning mode (24), the vessel (10) returns to the harvesting location to start another cycle of operation.

According to FCMI’s web site, the mobile wave energy harvesting system has several advantages including obviating the need for expensive undersea power cables, ability to move the system safely to port during stormy weather, and avoiding regulatory hurdles associated with permanent structures.

 

A recent decision in the Federal Court of Canada spotlights green IP litigation in Canada.

On October 5, 2007 Hollick Solar Systems Limited (Hollick) and Conserval Engineering Incorporated (Conserval), which specializes in solar air heating technology, commenced a patent and trade-mark infringement proceeding against several parties, including Matrix Energy Incorporated, a distributor of renewable energy equipment.

Hollick and Conserval claimed infringement of claims 1 and 10 of Canadian Letters Patent 1,326,619, entitled “Method and apparatus for preheating ventilation air for a building” (‘619 Patent).

As to the trade-mark, Hollick and Conserval alleged infringement and depreciation of the value of the goodwill of their trade-mark SOLARWALL® by the sale of the Matrixair system and the use of “mur solaire” and passing off by Matrix for the systems of Conserval.

The ‘619 Patent is directed to a method of preheating ventilation air and an apparatus for preheating ventilation air by solar means. 

More particularly, according to the Abstract of the ‘619 Patent, ventilation air for a building is preheated by providing on a wall of the building a solar-energy absorbent collector panel with a plurality of air-inlet openings which communicate with air collection channels behind the panel.

 

Outside air passing upwardly along the panel is heated by the heat of the panel, which itself is heated by a combination of solar radiation and heat being lost from the interior of the building.

The case focused on whether the term describing the location of the inlet “at the top” was an essential element of the claims at issue. 

Matrix asserted non-infringement of claims 1 and 10 of the ‘619 Patent because the inlet of the accused system was at the bottom, or at least not at the top.

Matrix also contended non-infringement of the trade-mark SOLARWALL® on the ground that the trade-mark was outside the scope of a distribution agreement between Matrix and Hollick.

The Federal Court, in construing the claims at issue, concluded:

the location of the inlet in the Matrix system (at the bottom or at least below the midpoint) had a material effect upon the way the invention worked and did not perform essentially the same as the invention of the ‘619 Patent;

that it would have been obvious to an expert in the field that drawing air from the bottom or at least below the midpoint of the panel would have a material effect upon the invention; and

the person skilled in the art would have understood that strict compliance with the term “at the top” was an essential element of the invention.

The court further noted the contradictory testimony of an expert for Hollick and Conserval, whose statements in another case directly conflicted with his testimony in this case.

The court also determined non-infringement of the trade-mark because Hollick and Conserval failed to prove loss of sales from use of the trade-mark by Matrix.

Marcelo König Sarkis, P. Eng., FIPIC, is a Senior Patent Agent and Professional Engineer with Heenan Blaikie LLP.  He is a member of Heenan Blaikie’s Intellectual Property as well as Climate, Cleantech and Sustainability Groups.

 

Nanosys is a Palo Alto company that develops advanced architected nanomaterials technology, including quantum dots for LEDs and silicon nanowire composites for advanced batteries. 

Quantum dots are nano-sized semiconductors which emit light when excited.

Nanosys’s quantum dot phosphors convert blue light from a standard GaN LED into different wavelengths.  Depending on the size of the dots used, LED light that passes through a film containing the dots can adjust the spectrum to convert the emitted light to various colors, including the white light the human eye is used to.

I recently spoke with Andrew Filler, Vice President of Intellectual Property, about the company’s patent portfolio.  Filler told me that Nanosys owns and/or exclusively controls over 750 U.S. patents and pending applications, with about 235 issued U.S. patents and another approximately 200 issued international patents.

A search in Cleantech PatentEdge™ yields 201 U.S., international and European patents and published applications listing Nanosys as owner and assignee.

Filler said that Nanosys’s patents comprise several technology or product families, including, for example with respect to its quantum dot technology, the core material of the quantum dots, the material for the shell that surrounds the core, ligands to put the dots in a matrix, quantum dot films, various quantum dot combinations, and devices such as light sources with quantum dots for producing white light.

One substantial patent family relating to core-shell material is entitled “Highly Luminescent Color-Selective Nano-crystalline materials” which has been exclusively licensed to Nanosys from MIT and, according to Cleantech PatentEdgeâ„¢, includes at least 8 issued U.S. patents and 4 or more pending/allowed U.S. applications (Nano Matrix Patents).  

For example, U.S. Patent No. 6,322,901 (‘901 Patent) is the parent patent in this family and was recently successfully defended in an ex parte reexamination proceeding instituted by Nanoco in the United Kingdom. 

According to Filler, on October 1, 2010 the U.S. Patent and Trademark Office issued a Notice of Intent to Issue in the ‘901 patent Reexamination, thereby validating all of the original broad core-shell quantum dot claims in their originally issued form, as well as the 19 new claims added during reexamination.

Nanosys also owns or controls exclusive rights to over 125 issued U.S. patents and pending patent applications (and over 150 corresponding foreign applications) covering all aspects of the QD-LED technology and applications, as illustrated in the sample patents provided below in Figure 1. 

FIG. 1:  Summary of exemplary Nanosys patents covering QD-LED technology

 

The  ‘901 patent represents just one of several fundamental patents covering core-shell quantum dot compositions and manufacturing techniques. 

In addition, Nanosys IP provides comprehensive coverage of nanocrystals, core-only quantum dots, nanocrystal/quantum dot synthesis, integration techniques, ligand and matrix materials and chemistries, quantum dot composites, and applications and devices including white light devices and other specific QD applications.

Some of Nanosys’s patents relate to fundamental small molecules for use with nanocrystals.  One example is U.S. Patent No. 6,949,206, granted in 2005 and entitled “Organic species that facilitate charge transfer to or from nanostructures” (‘206 Patent).

The ‘206 Patent is directed to conductive compositions for modification of charge transport across a nanostructure-containing matrix and claims a number of different molecules. 

These molecules are coupled to a nanostructure via a binding group, cause an exciton in the nanostructure, and facilitate the injection and/or extraction of charge with respect to the nanostructure.

By searching in Cleantech PatentEdgeâ„¢, I found as one example of a patent family relating to LED devices “Light-emitting diode (LED) devices comprising nanocrystals,” which includes at least two published U.S. applications.

An example is Application Publication No. 2010/0110728 (‘728 Application), which is directed to an LED device having nanocrystals in a hermetically sealed container. 

LED device (700) comprises LED (702) on a substrate (706).  A hermetically sealed container (708) contains a plurality of luminescent nanocrystals (710) and is optically coupled to the LED (702).

 

A light guide (712) is optically coupled to the hermetically sealed container (708).  A first portion of the light emitted from the LED (702) is down-converted by the luminescent nanocrystals (710), and this down-converted light along with a second portion of LED light are emitted from the light guide (712).

FIGS. 14A and 14B illustrate the down-converted light (1414, 1416) and the second portion of light (1412) in more detail in LED devices (1400, 1401) with luminescent nanocrystals (710) dispersed in a region (1404, 1404′) within the light guide (712). 

According to the ‘728 Application, hermetically sealing luminescent crystals allows for increased usage lifetime and luminescent intensity.

The business based on Nanosys’ patent-protected technology seems to be working well.  Filler told me that Nanosys made a “multi-prong” deal with Samsung worth up to $80-90 million, cutting across different products including flash memory devices, solar cells, film transistor displays, and LED lighting.its U.S. Lumidots business.