Quantifying Risk for Patent Infringement Liability Insurance

Major international corporations have long been the targets of IP infringement suits, and this is increasingly the case in the wind industry.  This has driven the need for indemnification of patent infringement liability in component/product supply agreements, particularly in business-to-business (B2B) market sectors. 

In addition, patent infringement liability insurance is becoming more commonplace for makers of industrial equipment who are hoping to sell their wares into several international markets.

In order to obtain an accurate picture of the potential risk of infringement, insurers have relied on the equipment suppliers and other domain subject matter experts to provide them a sense of the liability exposure. 

However, in some industries that are still maturing, there is a need for a more robust solution, since some of the companies competing in the industry may not have an established protocol for this type of risk mitigation activity.

As such, we have tracked and evaluated the market conditions in a specific vertical industry of the wind turbine supply chain, and we have identified the need for better visibility around the infringement risk potential as well as mitigation strategies for the turbine suppliers and acquirers.

I.          Current Wind Industry Market Conditions

Within the wind turbine industry, we see that falling demand has caused greater pricing pressure and that increased price competition is forcing consolidation as well as manufacturing capacity reduction. 

We can expect that as the Tier 1 wind turbine OEMs struggle to maintain profitability and fend off the Tier 2/3 competitors from taking away their market share, we will see those Tier 1 companies assert their IP rights to protect their revenue streams, or even to create new ones.

Also, Asian turbine manufacturers who have suffered the slowdown of turbine sales in their domestic markets have looked to overseas markets for new sales opportunities, and the US is one of the favored sectors. 

Some of these Asian manufacturers may have patent licensing agreements with European or US companies for their wind turbine designs, but that does not completely alleviate the risk of infringement for their product platforms. 

At present, freedom-to-operate (FTO) clearance efforts are not being undertaken as consistently as one might expect of an international company entering a new market.  There may be a belief that due to the licenses already held on the technology platform, the infringement risk is minimal.  It may also be a lack of cognizance that a FTO assessment is a prudent protection against willful infringement and treble damages.

Lastly, as mentioned before, the current trend in wind is for turbine suppliers to indemnify turbine purchasers from third party infringement.  While a sensible and necessary precaution, that may not preclude a wind farm project from being delayed, curtailed or otherwise taken offline if a patent owner seeks an injunction on the turbines because of a component, or even a means of turbine / wind farm control which is potentially infringing on the rights of that third party.

In the case of licensed technology, an adjustment in the project economics is likely made if technology/patent licenses are in place, since one would expect the turbine purchase price will typically include the cost of licenses being passed on by the turbine supplier to the purchaser. 

However, while licensing mitigates the IP infringement risk and might therefore reduce the insurance risk premium, this is really just cost shifting. 

Depending on the licensing fees and to what extent they are passed on in the price, the overall competitiveness of the project cost of energy may still be adversely affected, since a turbine with less risk exposure may introduce better project economics at a given wind site assuming turbine product commoditization and an otherwise relative equivalence of CapEx cost.

As the industry faces the expansion of regional Tier 1/2 companies and the increased competition and potential consolidation, we could see aggressive assertion of IP rights in the hopes of securing a market-leading position.  Precedent is already being set for the kinds of conditions which will exist in certain markets regarding the protection of intellectual property rights.

II.         Recent Assertion of IP Rights in Wind

Lately, we have seen the very public results of the assertion of IP rights within the wind industry.

Most recently, a dispute having implications on international trade arose when AMSC discovered that certain employees of their former customer, Sinovel, had orchestrated the theft of trade secret source code for controlling the converters.  Sinovel has had large orders put on hold with a well-known European project developer pending the outcome of the arbitration with AMSC. 

It is also well-known that General Electric Company (GE) asserted its rights and sought licensing deals with its peer group over variable speed wind turbine controls patents.

We have also seen GE go to court over the same patents with Mitsubishi Power Systems, and have witnessed the resultant drop-off in sales for Mitsubishi largely due to the IP infringement risk.  According to the 2010 Wind Technologies Market Report released by Lawrence Berkeley National Laboratory in June 2011, Mitsubishi was #3 in US market share going back to 2005 behind GE and Vestas, but dropped down due to increased competition from Siemens, Gamesa and Suzlon, as well as the rise of Clipper. 

While we may not be able to directly attribute Mitsubishi’s loss of US share solely to the IP matter with GE, it was certainly a major factor.

One of the key patents in this GE licensing / litigation matter was US5083039 (‘039 Patent), which deals with field oriented control of an induction generator as well as dynamic volt-ampere reactive (VAR) control of the turbine.  Since doubly-fed induction generators (DFIGs) utilizing field oriented control were largely utilized by many turbine manufacturers in the ‘90s and ‘00s, GE felt justified in the wide-spread assertion of the ‘039 patent, among others. 

Over the past 10 years or so, the wind industry has generally moved away from DFIG based turbines to permanent magnet generators (PMGs).  This technology offers numerous advantages for electrical as well as system efficiency, and the full power conversion architecture enables better turbine control and more opportunity for grid stability.

But since this move away from the ‘039 patented technology, there has been a buildup of IP around the turbine architecture of PMG and full power conversion by numerous Tier 1 turbine OEMs as well as the Tier 2/3s, sub-component suppliers, universities and others.

Thus, FTO initiatives are already underway by the proactive companies in the industry.  They are hunting for the next potential ‘039 Patent in the hopes of guarding against the widespread assertion, which we feel is highly likely given the market conditions.

III.       Patent Landscape Analysis

Last year we decided to conduct an investigation of the patent landscape of the utility scale, horizontal-axis wind turbine industry to gain insight into what technology trends have emerged thus far, and what might be in store for the future.  The results have also proven to be useful in examining the infringement risk exposure of turbine manufacturers and their product platforms.

Aggregation of these results has now led to a total set of 2340+ US patents and 2250+ published US applications dealing with utility scale, horizontal-axis wind turbine technology.  While the scope of these search results was limited to US issued patents and applications, most of these have equivalent foreign filings.  The Global patent landscape is still under investigation, so at present the US jurisdiction is the only set of comprehensive results we can present.

For the set of results obtained, an assessment of the relevance of each patent to the industry was performed and the results were classified as low, medium, medium/high, and high.  Definitions of this classification method are below. 

The assessment of industry relevance serves the purpose of indicating the degree to which the patent owner has already, or is likely to assert their rights and seek licenses or otherwise enforce a particular patent.  This should be an indication of the proverbial landmines to watch out for when navigating a technology and product roadmap through the landscape.

IV.       Wind Turbine Risk Profiles

Now, even with newly published patents and applications on a weekly basis, we are able to sustain a comprehensive assessment of the industry relevance of a particular technology.  In addition to this industry relevance, if we look at the turbine architecture of manufacturers’ product offerings we can establish a risk profile for those products being offered.

The risk profile is established in one of two ways, but always requires a detailed understanding of the turbine manufacturer’s product architecture. 

Unless a technical specification or operational profile along with a component sourcing list is provided to facilitate evaluation during a project finance due diligence effort, we are able to take advantage of our market research and competitive intelligence gathering efforts to construct a reasonably good picture of the competitive landscape and the turbine technology platforms offered by the OEMs.

Next, the methodology outlined above for the industry relevance assessment can be utilized in assessing the infringement risk of each patent.  The specific technology architecture can be evaluated against the claim breadth of the patent, the presumption of validity of the patent as well as the likelihood of assertion in order to come up with an overall risk profile for each turbine.

These results are consolidated to provide an overall relative ranking and provide an understanding of the scope of mitigation work required, or alternatively the risk premium which can be assessed. 

The example below shows a representative turbine comparison against the industry average and the quantified risk exposure in terms of the number of patents.  Note that only issued patents are assessed for infringement risk.  Pending applications can also be reviewed for potential risk exposure, should the published claim set subsequently issue “as is.”

As wind turbine technology becomes more mainstream, IP infringement risk mitigation will become essential to the industry.  Continued technological innovation and the commercialization of it will drive down energy production costs to a point where wind is the energy source of choice.

Philip Totaro is the Principal at Totaro & Associates, a consulting firm focused on innovation strategy, competitive intelligence, product development and patent search.  To find out more, or get in touch please visit www.totaro-associates.com.

Valence Technology is an Austin, Texas, company that develops and manufactures long-life lithium iron magnesium phosphate batteries. 

Valence recently won a victory in the European Patent Office (EPO) Opposition Board when the Board dismissed an appeal of a decision revoking a European patent held by rival Hydro-Quebec (HQ).

The EPO initially granted European Patent Number 0904607, entitled “Cathode materials for secondary (rechargeable) lithium batteries” (‘607 Patent) to the University of Texas; the patent is now owned by HQ. 

Valence challenged the patent grant in an opposition proceeding filed in 2005.  The EPO Opposition Board revoked the grant in December 2008 because the patent lacked novelty (EPO_Revocation).  HQ appealed that decision. 

Last month the EPO Opposition Board dismissed HQ’s appeal, resulting in cancellation of the patent.

The ‘607 Patent is a European relative of U.S. Patents Nos. 5,910,382, 6,514,640, 7,955,733, 7,960,058 and 7,964,308, entitled “Cathode materials for secondary (rechargeable) lithium batteries” (Cathode Materials Patents).

The Cathode Materials Patents relate to host materials for use as electrodes in lithium ion batteries.  In particular, the patents are directed to a synthesized cathode material containing a compound with an olivine structure comprising the general formula LiMPO₄ where M is iron, manganese, nickel or titanium.

According to the Cathode Materials Patents, these cathode materials provide a larger free volume for lithium ion motion that allows higher conductivity and therefore greater power densities.

Valence and HQ are not strangers to litigation involving the Cathode Materials Patents.  Read previous posts here and here about those cases, which the parties settled as part of a cross-licensing deal in October of last year.

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.

Previous posts (here and here) discussed the U.S. International Trade Commission case between solar installation competitors Westinghouse Solar (formerly Akeena Solar) and Zep Solar (Zep) involving two Westinghouse patents, U.S. Patents Nos. 7,406,800 (‘800 Patent) and 7,987,641 (‘641 Patent).

Both patents cover what Westinghouse refers to as its “Andalay System,” a solar power system which includes solar panels with integrated racking, wiring and grounding (DC solar panels), and integrated microinverters (AC solar panels) for residential and commercial customers.

In August 2011 Zep asked the U.S. Patent and Trademark Office (USPTO) to re-examine the ‘641 Patent, entitled “Mounting system for a solar panel.”

In a recent Action Closing Prosecution, the U.S. Patent and Trademark Office threw out the entire patent, rejecting all three claims of the ‘641 Patent as invalid in view of a number of prior art references.

The ‘641 Patent is directed to an integrated solar module frame and racking system.  Claim 1, the only independent claim of the patent, reads:

1. A solar module comprising:

a body portion having a frame;

one or more splices, wherein each splice couples the frame of the body portion rigidly to a frame of the body portion of an adjacent solar module;

a bracket that securely attaches the solar module to a roof wherein the bracket is located along any portion of the frame;

wherein each splice further comprises a body for coupling the frames of the solar module and the adjacent solar module together and a securing mechanism for securing the frames of the solar module and the adjacent solar module together.

FIG. 2 of the ‘641 Patent (reproduced below) shows three modules (102A-102C) coupled together to form an integrated system.  A splice (104e) mechanically connects one module to another and provides the electrical grounding connection between the solar modules.  The unlabeled component shown at the bottom of FIG. 2 is the bracket.

The Action Closing Prosecution rejected the claims of the ‘641 Patent as anticipated and obvious over several prior art patents, including U.S. Patent Application Publication No. 2002/0112435 to Hartman, U.S. Patent No. 4,215,677 to Erickson, U.S. Patent No. 5,232,518 to Nath, U.S. Patent No. 4,312,325 to Voges, and Japanese Patent Application No. 10-266499 to Ito.

Westinghouse can appeal the Action to the USPTO Board of Patent Appeals and Interferences or the U.S. Court of Appeals for the Federal Circuit.

Switch Lighting, a San Jose, California, company, was recently named as a 2012 Finalist for Best New Product for Energy and Sustainability by the Edison Awards for its Switch75 Light Emitting Diode (LED). 

The Switch75 is a liquid cooled LED designed to be used in any fixture, including those with dimmer switches, while providing warm white light.

The Switch75 is described in U.S. Patent Application Number 2012/0026723 entitled “Omni-Directional Channeling of Liquids for Passive Convection in LED Bulbs” (‘723 Application).

LEDs offer many advantages over incandescent and fluorescent bulbs, however, they also have some drawbacks.  One such drawback is that they cannot be allowed to get hotter than approximately 120 degrees Celsius.  LEDs are therefore limited to very low power, producing insufficient illumination for replacement of incandescent or fluorescent bulbs. 

The ‘723 Application describes a way to overcome this limitation by utilizing a thermally conductive fluid which passively circulates through the light bulb to transfer heat from the LEDs to the shell of the bulb, cooling the LED.

The ‘723 Application describes an LED bulb like the one depicted in Figure 1 of the application, reproduced below.   The bulb includes a base (112), a shell (101) encasing components of the bulb, and a plurality of LEDs (103) connected to LED mounts (107) made of any thermally conductive material. 

Figure 1

The bulb is filled with a thermally conductive liquid (111) for transferring heat generated by the LEDs (103) to the shell (101).  The liquid could be any thermally conductive material capable of flowing. 

Separating the LED mounts (107) are channels (109) which both increase the surface-to-area-to-volume ratio of the LED mounts, and facilitate efficient passive convective flow of the liquid (111).

Figure 2 of the ‘723 Application depicts the passive convective flow of the thermally conductive liquid (111) overlaid on a cross section view of the LED bulb shown in Figure 1.   Figure 2 depicts the bulb in an orientation where the base is located above the bulb.  This is but one of many orientations the bulb may assume. 

Figure 2

The arrows indicate the direction of flow of the liquid.  Once heated, the liquid rises and reaches the top portion of the shell (101) where heat is conductively transferred to the shell, cooling the liquid. 

As the liquid cools, its density increases, causing it to fall within the shell.  The heating/cooling process creates a convective cell.  This process is passive, meaning it requires no mechanical assistance.  The flow of the liquid is maintained merely by the heating and cooling of the liquid.

A cooled LED will allow the bulb to handle more power, illuminate brightly, and provide a lifespan much longer than an incandescent or fluorescent bulb. 

The Edison Awards winners will be announced at their Awards Gala in New York City on April 26, 2012.

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.

In a previous post, I discussed a Texas federal court decision denying Mitsubishi’s motion for summary judgment in which it argued it did not infringe U.S. Patent No. 7,629,705 (‘705 Patent) and that the ‘705 Patent is invalid.

The ‘705 Patent is entitled “Method and apparatus for operating electrical machines” and directed to methods of facilitating zero voltage ride through so the turbine can remain online during voltage dips down to zero volts.

Now a Texas jury has found that Mitsubishi infringed the ‘705 Patent and has awarded GE about $170 million in damages (GE_Verdict_Form).

The jury rejected several of Mitsubishi’s proposed invalidity grounds and found GE had proven lost sales of $166,750,000 due to Mitsubishi’s infringement and that it was entitled to $3,445,000 in a reasonable royalty.

A GE spokesman, Chet Lasell, said “GE firmly believes that protecting our intellectual property rights is the foundation for innovation, investing in high-technology industries and creating high-value jobs.  This is certainly true in the wind industry, which holds the hope and the potential for a cleaner energy future.”

Not surprisingly, Mitsubishi took the opposite view.  Its spokeswoman, Sonia Williams, said the case should be viewed “within the larger context:  as part of a GE litigation strategy that would stifle competition and innovation in wind turbine technology.” (see previous posts here and here about Mitsubishi’s antitrust allegations).

Mitsubishi’s statement also noted that the trial will now proceed to a second phase relating to Mitsubishi’s allegations that GE engaged in inequitable conduct in procuring the ‘705 Patent.

But this is the second recent victory for GE against Mitsubishi.  The Federal Circuit recently reversed a U.S. International Trade Commission (ITC) ruling of no domestic industry with respect to GE’s U.S. Patent No. 6,921,985, entitled “Low voltage ride through for wind turbine generators,” giving GE another shot at Mitsubishi in the ITC.

As oil prices soar, the exploration of alternative fuel sources continues. Primus Green Energy, based in Hillsborough, New Jersey, has created a high quality, 93-octane bio-gasoline at a price that will be both competitive and profitable once production is scaled up.

According to Dr. George Boyajian, Primus Green Energy’s VP of Business Development, the company has numerous patent applications related to gasification, and the application of liquid fuel synthesis technology. The patent applications are in various stages of the application process, Dr. Boyajian stated, but he expects that several will be published by the end of this year.

Primus Green Energy’s technology can create 93-octane bio-gasoline from biomass or natural gas. Thus, the plant can still produce bio-gasoline using natural gas if needed, and will still yield the same high-quality product.

Miscanthus, an energy grass that can grow up to 15 tons per acre each year and does not displace fuel crops, is the biomass of choice.

The following diagram from the company website illustrates the basic process Primus Green Energy utilizes to create bio-gasoline:

First, the biomass is placed into a gasifier with steam, and through a thermochemical process, turns the substances into a syngas. The syngas is made of hydrogen gas and carbon monoxide. The syngas is then scrubbed to take out sulfur and carbon dioxide. A liquid fuel synthesis finally converts the syngas to 93-octane.

According to Dr. Boyajian, “The key to making the process efficient is having a ratio of 2.2 to 1 of hydrogen to carbon monoxide.” 93-octane is good for refiners and blenders due to its low vapor pressure, low corrosion, good cold flow properties, good lubricity, the right amount of aromatics, and low benzene.

The company currently has a pilot plant in Hillsborough, New Jersey that produces several kilograms of gasoline each hour, according to Dr. Boyajian. The continuous demonstration plant, which is also in Hillsborough, is currently under construction and will produce 30 kg of gasoline each hour upon completion. 

Recently, Primus Green Energy received a $12 million investment to complete its continuous demonstration plant. See the Bloomberg article for more information.

In 2013, Primus Green Energy expects to break ground on a commercial plant that will produce as much as 4.5 million gallons of bio-gasoline annually. The following pictures are of the Hillsborough, New Jersey plant:

Primus Green Energy’s lead investor is IC Green, a green energy arm of Israel Corporation, and the company’s engineering procurement construction contractor is Bechtel Corporation. The company also has an array of other partnerships with companies including Echotherm, ECO Energy, and Lockheed Martin.

Dr. Boyajian is confident in the technology and states, “Primus Green Energy makes gasoline and only gasoline. It is a high quality 93-octane gasoline that will be competitively priced and profitable, even if oil is only 60-70 dollars per barrel. Yields have been demonstrated repeatedly at 27% by weight, and yields are expected to reach 33%.”

* Rosemary Ostfeld is a contributor to Green Patent Blog.  Rosemary recently completed both her undergraduate and graduate education at Wesleyan University in Middletown, Connecticut.  She double majored in Biology, and Earth & Environmental Sciences as an undergraduate, and received her Master’s in Earth & Environmental Sciences.

 

A previous post discussed Mitsubishi’s win over GE in the U.S. International Trade Commission (USITC) case involving three of GE’s variable speed turbine patents, one front of the competitors’ major wind patent litigation.

The accused products in that case are Mitsubishi’s models MWT 92 and MWT 95 variable speed wind turbines.

In that proceeding, the USITC held in a January 2010 decision that Mitsubishi did not violate U.S. Patents No. 5,083,039, entitled “Variable speed wind turbine” (‘039 Patent), 6,921,985, entitled “Low voltage ride through for wind turbine generators” (‘985 Patent), and 7,321,221, entitled “Method for operating a wind power plant and method for operating it” (‘221 Patent). 

A more detailed discussion of the asserted patents can be found in a previous post here.

More particularly, the USITC found that Mitsubishi’s turbines did not infringe the ‘039 Patent or the ‘221 Patent, and there was no domestic industry as to the ‘985 Patent. 

To be enforceable in the USITC, a patent must have a “domestic industry” associated with it.  That is, there must be some U.S. activity such as manufacturing, R&D, or licensing of an article that embodies at least one claim of the asserted patent.

GE appealed, and the U.S. Court of Appeals for the Federal Circuit recently affirmed (GE-Mitsubishi_Fed_Cir) the USITC ruling that the ‘221 Patent is not infringed and reversed the determination of no domestic industry as to the ‘985 Patent.  Because the ‘039 Patent expired in February 2011, the Federal Circuit vacated the rulings on that patent as moot.

 The Federal Circuit agreed with the USITC that the disputed claim of the ‘221 Patent is limited to resuming current feed to a turbine at the end of a grid disturbance as measured by the current declining to a “predetermined value,” a term that means only current value and does not include a fixed period of time.

Because the Mitsubishi turbines do not measure current or voltage in determining when to resume the feed-in connection, but instead recouple after a pre-set period of time, the Federal Circuit affirmed non-infringement of the ‘221 Patent.

The issue of whether GE has a domestic industry with respect to the ‘985 Patent turned on interpretation of the term a “circuit coupled with the input of the inverter and with the converter controller to shunt current from the inverter and generator rotor” in claim 15 of the patent.

FIG. 4 of the ‘985 Patent shows two inverters (410, 420) which receive power during a low voltage event to keep the wind turbine connected to and synchronized with the power grid.

The critical claim construction question for claim 15 was whether the claim requires the circuit “coupled with the input of the inverter” that shunts current from the inverter be located entirely outside the inverter.

The USITC held that the shunt circuit had to be separate from the inverter; otherwise the circuit could not shunt current from the inverter.

The Federal Circuit disagreed and held that the shunt circuit does not have to be separate from the inverter:

[T]he function of the shunt circuit does not depend on whether the shunt circuit is entirely outside of the inverter, and the ‘985 specification does not require separation of the inverter and the shunt circuit in order for that circuit to be coupled with the input of the inverter and with the converter controller; rather, the term “coupled with” indicates a connection.

With the broader construction of “coupled with” claim 15 of the ‘985 Patent covers the GE turbines, so the Federal Circuit reversed the USITC and found a domestic industry with respect to the ‘985 Patent. 

The case will now go back to the USITC for further proceedings with respect to the ‘985 Patent.

Envia Systems is a Newark, California, company that develops high performance, low cost lithium-ion energy storage solutions. 

In a recent Press Release, Envia announced that they have achieved a world record 400 Watt-hour/kilogram (Wh/kg) energy density for rechargeable lithium-ion batteries.  This milestone comes after much development and testing:

Dr. Sujeet Kumar, Envia Systems co-founder said “Since the inception of Envia, our product team has worked tirelessly and logged over 25 million test channel hours to optimally develop each of the active components of the battery: Envia proprietary Si-C anode, HMCR [High Capacity Manganese Rich] cathode and EHV [Envia’s High Voltage] electrolyte.”

The anode, cathode and electrolyte materials appear to be described in several patent applications owned by Envia.

The patent applications describing Envia’s cathode are U.S. Patent Application Publication No’s:

2010/0086853 (‘853 Application), entitled “Positive Electrode Materials for Lithium Ion Batteries Having a High Specific Discharge Capacity and Processes for the Synthesis of These Materials”;

2011/0076556 (‘556 Application), entitled “Metal Oxide Coated Positive Electrode Materials for Lithium-Based Batteries”;

2011/0111298 (‘298 Application), entitled “Coated Positive Electrode Materials for Lithium Ion Batteries”; and

2010/0151332 (‘332 Application), entitled “Positive Electrode Materials for High Discharge Capacity Lithium Ion Batteries”

Figure 1 below is a depiction of  a battery taken from the ‘853 Application.  The Figure depicts a battery (100), a negative electrode (102), a positive electrode (104), and a separator (103) between the positive electrode (104) and negative electrode (102).

Envia’s patent-pending process involves applying excess lithium, in the form of lithium manganese oxides, on the cathode to increase overall energy density. According to the ‘298 Application:

It is believed that appropriately formed lithium-rich lithium metal oxides have a composite crystal structure in which the excess lithium supports the formation of an alternative crystalline phase.  For example, in some embodiments of lithium rich materials, a Li2MnO3 material may be structurally integrated with either a layered LiMnO2 component or similar composite compositions with the manganese cations substituted with other transition metal cations with appropriate oxidation states.

At least one of Envia’s patent applications describes an anode: Patent Application Publication No. 2011/0111294, entitled “High Capacity Anode Materials for Lithium Ion Batteries” (‘294 Application).

According to the ‘294 Application:

Desirable high capacity negative electrode active materials can be based on nanostructured silicon materials and/or composites with nanostuctured carbon materials.  In particular, nanostructure silicon can comprise elemental silicon nanoparticles and/or porous elemental silicon, as well as corresponding silicon alloys and composites thereof … carbon coatings can be applied over the silicon-based materials to improve electrical conductivity, and the carbon coatings seem to also stabilize the silicon based material with respect to improving cycling and decreasing irreversible capacity loss.

At least two patent applications describe Envia’s electrolyte:

2011/0052981 (‘981 Application), entitled “Layer-Layer Lithium Rich Complex Metal Oxides with High Specific Capacity and Excellent Cycling”; and

2011/0017528  (‘528 Application), entitled “Lithium Ion Batteries with Long Cycling Performance”

The common theme throughout all the patent applications is the effect small changes in battery chemistry and materials have on performance.  According to the ‘556 Application:

It has been found that relatively small amounts of metal oxide coating on a lithium rich metal oxide active material can provide desirable improvements in lithium-based battery performance with respect to both specific discharge capacity and cycling.

Envia’s batteries have environmental benefits in addition to their ability to store a record amount of energy.  According to the ‘853 Application:

These compositions [in the batteries] use low amounts of elements that are less desirable from an environmental perspective, and can be produced from starting materials that have reasonable cost for commercial scale production.

Envia’s new battery technology was tested by the Electrochemical Power Systems Department at the Naval Surface Warfare Center in Crane, Indiana.  The test results confirmed Envia’s claims regarding its batteries demonstrating an energy density between 378-418 Wh/kg. 

Envia’s Systems Chairman and CEO, Atul Kapadia noted the potential implications for electric vehicles:

In an industry where energy density tends to increase five percent a year, our achievement of more than doubling state-of-art energy density and lowering cost by half is a giant step towards realizing Envia’s mission of mass market affordability of a 300-mile electric vehicle.

In fact, drivers may see Envia batteries in future General Motors electric vehicles.  General Motors Ventures LLC invested $17 million in Envia in a 2011 equity investment round and, in a separate agreement, secured the right to use Envia’s cathod material in GM EVs.

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.

 

With the U.S. Patent and Trademark Office Green Technology Pilot Program closed, it’s time to think outside the box (and outside the country)

The U.S. Patent and Trademark Office (USPTO) Green Technology Pilot Program is now history. 

As of February 27, 2012 petition number 3,500 had been granted (see the most recent green_report), and the USPTO announced that the green fast track is closed.

So what do green patent applicants who want, need, crave, and/or yearn for accelerated examination in the USPTO do now?

The USPTO has two suggestions.  First, try the office’s new Track One Prioritized Examination procedure.  

Part of the recently-enacted America Invents Act, this new fast track affords a patent application special status and aims to provide a final disposition within a year of the grant of prioritized status.

But Prioritized Examination costs $2,400 for small entities and $4,800 for large entities.

Alternatively, the USPTO invites green patent applicants to take advantage of its established Accelerated Examination program. 

This is the familiar Petition to Make Special based on particular circumstances such as infringement or the applicant’s age or specific technologies like those relating to HIV/AIDs, cancer, countering terrorism, and, to the point of this post, environmental quality and energy.

However, this program shifts the prior art search and evaluation burden (and cost) to the applicant.  A complete Petition to Make Special requires a pre-examination search and submission of the material prior art.

The Accelerated Examination procedure also imposes the onerous requirement of preparing an Examination Support Document (ESD) explaining where each claim limitation can be found in the prior art and how each of the claims is patentable over the prior art.

The ESD has been nicknamed the Express Suicide Document for the potential inequitable conduct and other risks it can raise should a resulting patent be litigated down the road.

What about Patents for Humanity?  This is not an accelerated examination procedure, but an awards competition in which patentees and licensees submit applications describing how they have used their patented technologies to address humanitarian needs.

Judges choose winners in four categories, one of which is clean technology.  The winner is awarded a certificate for accelerated processing of one its patent applications. 

To quote Dom DeLuise, as Emperor Nero in Mel Brooks’ History of the World, Part I, “Nice.  Not thrilling, but nice.”  Certainly not something anyone will incorporate into a regular filing strategy.

Allow me to make another suggestion. 

Remember two things.  First, the Patent Prosecution Highway (PPH) allows an applicant that receives allowed claims or an issued patent in the intellectual property office in which the patent application was first filed to accelerate examination of a corresponding patent application in a second intellectual property office where the application is subsequently filed. 

The PPH is technology agnostic and comprises twenty-two participating jurisdictions, including significant ones without green fast tracks such as the European Patent Office.

Second, the Green Technology Pilot Program was only one of seven green patent fast track programs offered by various national IP offices around the world.  Other countries that still provide accelerated examination for green patent applications are the UK, Canada, Australia, Japan, Israel, and Korea.

For applicants who are going to file in one or more of these countries anyway (typically later via the PCT international process and timeline), a good strategy is to file first in one of these countries, say Canada, and get on that country’s green tech fast track.

Once the applicant gets claims allowed by the Canadian Intellectual Property Office, you can take the allowed claims and use the PPH to have the corresponding U.S. patent application expedited at the USPTO (and/or many other intellectual property offices around the world). 

So one can leverage one of the remaining green tech fast track programs and use it as an HOV lane to provide quick access to the PPH and get those green patent applications accelerated in many countries that don’t have green fast tracks.

 

 

Hydrovolts, a Washington-based company, specializes in hydrokinetic turbines.  The company has created turbines that can be used to generate energy in canals, waterfalls, and remote locations.

Hydrovolts owns U.S. Patent Application Publication No. 2010/0237626 (‘626 Application), entitled “Hinged blade cross-axis turbine for hydroelectric power generation” and directed to a water turbine having pivotable blades.

Water turbine (120) is disposed in frame (110), and a turbine shaft axis (122) lies in the center of the frame (110).  The frame is connected to two electric power generators (105), found on either side of the device.

The technology’s pivoting blades (126 A, B, C & D), which Hydrovolts calls the flipwing rotor, differentiate it from most other turbines. As water (90) flows through the device, it comes in contact with blades that pivot around blade axes (125).

The pivoting nature of the blades allows for a high level of blade surface area to maintain contact with the water as it flows through the device.

According to the ‘626 Application, this innovation provides several important advantages.  First, less force is required to move each blade because each blade has its own axis in addition to a central axis.

Also, more energy can be harnessed than in a device made of the same amount of material without pivoting blades. 

Finally, lifting forces drive the device, allowing for it to operate in low flow conditions while many other turbines have a “stall-speed,” or minimum speed required to drive the device.

See a video of a Hydrovolts hydrokinetic turbine in action here and this Greentech Media piece about the company’s plan to generate hydropower from wastewater treatment plants.

Rosemary Ostfeld is a contributor to Green Patent Blog.  Rosemary recently completed both her undergraduate and graduate education at Wesleyan University in Middletown, Connecticut.  She double majored in Biology, and Earth & Environmental Sciences as an undergraduate, and received her Master’s in Earth & Environmental Sciences.