A number of green patent complaints have been filed in the last several weeks, with LED lighting continuing to be the most litigated area.  Complaints were also filed in smart grid and soil and groundwater remediation technologies.

 

LEDs

Technical Consumer Products v. Philips Solid-State Lighting Solutions, Inc. et al.

Technical Consumer Products, a distributor of LED lighting products brought this declaratory judgment suit seeking judgments of non-infringement and/or invalidity of eight Philips patents.  The patents-in-suit are:

U.S. Patent No. 6,013,988, entitled “Circuit arrangement, and signaling light provided with the circuit arrangement”;

U.S. Patent No. 6,147,458, entitled “Circuit arrangement, and signaling light provided with the circuit arrangement”;

U.S. Patent No. 6,577,512, entitled “Power supplies for LEDs”;

U.S. Patent No. 6,586,890, entitled “LED driver circuit with PWM output”;

U.S. Patent No. 7,038,399, entitled “Methods and apparatus for providing power to lighting devices”;

U.S. Patent No. 7,352,138, entitled “Methods and apparatus for providing power to lighting devices”;

U.S. Patent No. 7,256,554, entitled “LED power control methods and apparatus”; and

U.S. Patent No. 7,737,643, entitled LED power control methods and apparatus”.

The complaint was filed October 11, 2012 in the Northern District of Ohio.

Koninklijke Philips Electronics N.V. v. Aurora Lighting, Inc.

Filed November 2, 2012 in the District of Massachusetts, Philips’ complaint alleges infringement of seven patents relating to LED lighting. 

Philips accuses Clearwater, Florida-based Aurora Lighting of selling a host of allegedly infringing products including retrofit bulbs, downlight flat panel products, highbay products, floodlight products, canopy and wallwasher products, submersible products, and street light products.

The asserted patents are:

U.S. Patent No. 6,250,774, entitled “Luminaire”;

U.S. Patent No. 6,561,690, entitled “Luminaire based on the light emission of light-emitting diodes”;

U.S. Patent No. 6,788,011, entitled “Multicolored LED lighting method and apparatus”;

U.S. Patent No. 7,038,399, entitled “Methods and apparatus for providing power to lighting devices”;

U.S. Patent No. 7,161,311, entitled “Multicolored LED lighting method and apparatus”;

U.S. Patent No. 7,262,559, entitled “LEDs driver”; and

U.S. Patent No. 7,659,673, entitled “Methods and apparatus for providing a controllably variable power to a load”.

LED Tech Development, LLC v. Apple, Inc.

LED Tech Development, LLC v. Samsung Electronics America, Inc. et al.

LED Tech Development, LLC v. Fujitsu America, Inc. et al.

A previous update reported on LED Tech Development’s (LED Tech) suits against Home Depot and Coleman. 

The company substantially expanded its patent enforcement campaign recently with three new complaints against Apple, Samsung and Fujitsu, filed in federal court in Delaware on October 11th, October 15th, and November 9th, respectively.

The Apple complaint asserts U.S. Patent No. 6,095,661, entitled “Method and Apparatus for an L.E.D. Flashlight” (‘661 Patent), U.S. Patent No. 7,393,119, entitled “Method and apparatus for constant light output pulsed L.E.D. illumination” (‘119 Patent), U.S. Patent No. 6,488,390, entitled “Color-adjusted camera light and method” (‘390 Patent), and U.S. Patent No. 6,808,287, which is related to the ‘661 Patent, entitled “Method and apparatus for a pulsed L.E.D. illumination source” (‘287 Patent), and directed to a hand held portable LED device that maintains a predetermined light output level by selectively applying pulsed power from a DC voltage source to the LED units.

LED Tech alleges that certain Apple products utilizing pulse-width modulation signals to drive light-emitting diodes are infringing the asserted patents, including the iPad3 and the Macbook Pro.

The Samsung complaint also lists the ‘661, ‘119, ‘390 and ‘287 Patents, and the Fujitsu Complaint asserts the ‘661, ‘119 and ‘287 Patents.

Trustees of Boston University v. Everlight Electronics Co. et al.

Trustees of Boston University v. Seoul Semiconductor Co. et al.

Boston University recently sued two LED makers, alleging infringement of U.S. Patent No. 5,686,738 (‘738 Patent).  The complaints (BU-Everlight complaint; BU-Seoul complaint) were filed in the District of Massachusetts on October 17, 2012.

The ‘738 Patent is entitled “Highly insulated monocrystalline gallium nitride thin films” and directed to gallium nitride semiconductor devices and methods of preparing highly insulating GaN single crystal films in a molecular beam epitaxial growth chamber.

The accused products include LEDs containing gallium nitride thin films.

Altman Stage Lighting Co. v. Lightronics Inc.

Filed October 18, 2012 in the Southern District of New York, Altman’s complaint accuses Lightronics of infringing U.S. Patent No. 8,152,332 (‘332 Patent).  Altman is a Yonkers, New York, stage lighting company.  According to Altman, a particular wash lighting fixture made by the Virginia-based lighting and control systems company infringes the ‘332 Patent.

The ‘332 Patent is entitled “LED cyclorama light” and directed to a cyclorama light containing an LED array.

Smart Grid

IP Co. v. Crestron Electronics, Inc.

IP Co., d/b/a Intus IQ has been an active non-practicing patentee in smart grid (see, e.g., here), and continued that trend recently with a lawsuit against New Jersey-based Crestron Electronics.

According to a complaint filed October 29, 2012 in the Eastern District of Texas, Crestron is directly infringing, contributorily infringing and inducing infringement of U.S. Patent No. 6,044,062 (‘062 Patent) by its sale of infiNET wireless lighting control and automation systems.

The ‘062 Patent is entitled “Wireless network system and method for providing same” and directed to certain wireless network systems having a server providing a gateway between two networks.

Environmental Remediation

ThinkVillage Kerfoot, a Boulder, Colorado company, recently sued California-based water treatment company APTwater, alleging infringement of ten patents relating to soil and groundwater remediation technologies.

The complaint was filed in the Central District of California on November 6, 2012 and lists the following patents:

U.S. Patent No. 6,306,296, entitled “Groundwater and soil remediation with microporous diffusion apparatus”;

U.S. Patent No. 6,312,605, entitled “Gas-gas-water treatment for groundwater soil remediation”;

U.S. Patent No. 6,827,861, entitled “Gas-gas-water treatment for groundwater soil remediation”;

U.S. Patent No. 6,872,318, entitled “Microporous diffusion apparatus”;

U.S. Patent No. 7,537,706, entitled “Microporous diffusion apparatus”;

U.S. Patent No. RE43,350, entitled “Microporous diffusion apparatus”;

U.S. Patent No. 6,984,329, entitled “Coated microbubbles for treating an aquifer or soil formation”;

U.S. Patent No. 7,264,747, entitled “Coated microbubbles for treating an aquifer or soil formation”;

U.S. Patent No. 6,582,611, entitled “Groundwater and subsurface remediation”; and

U.S. Patent No. 7,033,492, entitled “Groundwater and subsurface remediation”.

For more than ten years, Heslin Rothenberg’s Clean Energy Patent Growth Index has been reliably tracking green technology patent grants.  The CEPGI consistently provides interesting data, which often put solid numbers behind the trends those of us in this field see, hear anecdotally, or just intuitively know.

The Second Quarter2012 Results are a good example of this:  the report reveals the highest single quarter total of granted green patents since the CEPGI started back in 2002, with 786 patents in Q2 2012.  This number is up from 694 granted patents in the prior quarter, and up 249 from Q2 2011.

Fuel cell patents topped the index, with 264 patents (up 32 from Q1 2012 and up 59 year over year).  The second highest technology sector is solar, which saw 211 patents granted (up 23 from Q1 2012 and up 89 year over year).

There were 187 wind patents granted (up 30 from Q1 2012 and up 74 year over year).  The remaining technology sectors tracked included hybrid/electric vehicles (65 patents), biomass/biofuels (36 patents), and hydroelectric (6 patents).

Toyota was the top green patent assignee with 46 patents.  Of those, 32 were fuel cell patents, and 14 were directed to hybrid/electric vehicle technology.  GE took second place with 43 patents, the vast majority of which were wind power technologies.  Third place went to GM.  The rest of the top ten consisted of Honda, Samsung, Vestas, Mitsubishi, Siemens, Sanyo and Ford.

With regard to geographic breakdowns, Japan led non-US green patentees with 158 patents, and California was in second place with 95 patents.  The third place spot went to Germany (62 patents) with New York (54 patents) and Michigan (52 patents) rounding out the top five.  Other countries and states in the top ten included Korea, Denmark, Colorado, Taiwan, France, Spain and Texas.

Wind Wire is a South Bend, Indiana, installer of residential wind turbines.

In August 2010 Roger and Patricia Finney sued Wind Wire in Indiana state court for alleged greenwashing in connection with a residential wind turbine system.

The Finneys’ central charge was that the company fraudulently induced them to purchase a wind turbine for their home by knowingly making false or misleading statements as to cost savings the turbine would provide.  After a trial court judgment for the Finneys Wind Wire appealed.

In a recent opinion the Court of Appeals of Indiana affirmed the judgment for the Finneys.  At issue in the case was a Wind Wire brochure making a number of representations about the cost savings of the wind turbine, including the following:

the average household would save “approximately 75% to 100% of current electric service”;

the customer would see a return on investment or “payoff span of 3-4 years”;

the wind turbine system could “generate an average of 700 K wh (sic) per hour”; and

the homeowner would receive a “substantial refund” on taxes by installing the wind turbine system.

Apparently, through its representatives, Wind Wire echoed all of the claims from the brochure in its communications with the Finneys.  A sales rep repeated the cost saving claims to the Finneys.  Wind Wire also erroneously told them that AEP, the Finneys’ utility, would purchase the excess energy produced by their wind turbine.

The company also told the Finneys that they would be entitled to a tax credit, the amount of which would be based on a percentage of the purchase price of the turbine when, in fact, the credit was fixed at $900 for the Finneys.

Since the Finneys’ wind turbine was installed, it has produced no excess power and has had no effect on their electric bills.  According to AEP, it typically takes not 3-4 years, but 25 years for a residential wind turbine to pay for itself.  Instead of the advertised 700 kWh, after about one year of use the Finneys’ turbine has produced a total of only 134.2 kWh of electricity.

In perhaps the most tragicomic manifestation of greenwashing here, the wind turbine actually consumes energy when it is idle.  Similarly absurd was the revelation that the sales rep dealing with the Finneys had no prior wind turbine experience and “the extent of [his] formal training was a one-hour ‘webinar.'”

The trial court held that Wind Wire had breached its contract with the Finneys, in particular both the express warranties and the implied warranty of fitness of the turbine, and that it fraudulently induced the Finneys to enter into the contract by knowingly misrepresenting its experience and expertise and the cost savings of the turbine.

In view of all the egregious evidence on record, perhaps it’s no surprise that Wind Wire’s strategy on appeal was to steer away from the facts of the case and instead rely on a purely legal argument based on a provision of its contract with the Finneys.

In particular, Wind Wire contended that the Finneys could not justifiably rely on any of its representations about the wind turbine because their contract contained an “integration” clause.  An integration clause is a provision stating  that the contract contains the parties’ entire agreement to the exclusion of any outside statements or representations.

The appellate court disagreed and affirmed because it found no clear error with the trial court’s judgment.  As to Wind Wire’s argument, the appellate court noted that under Indiana contract law a party can overcome the effect of an integration clause if it shows it had a right to rely on the alleged misrepresentations and did rely on them in executing the integration clause.

An interesting side note is that Southwest Windpower, the manufacturer of the turbines Wind Wire installs, placed the installer on six months’ probation because of concerns over Wind Wire’s marketing materials and customer satisfaction.

Thanks to the DSV Construction Law Blog’s post on this, which brought the story to my attention.

In a number of previous posts (e.g., here, here, here and here), I and others have reported on the accelerated examination programs for green technology patent applications offered by various national patent/IP offices in countries such as the UK, Korea, Brazil and China.

My most recent article, published last week in the Fall 2012 Issue of the Berkeley Technology Law Journal, analyzes and critiques these programs and suggests some improvements.

Entitled “Building the Global Green Patent Highway:  A Proposal for International Harmonization of Green Technology Fast Track Programs,” the article argues that the programs should be harmonized and governed by a single standardized set of rules.

My recommendation flows from the diagnosis that it is very burdensome to a green patent applicant with an international filing strategy to participate in multiple fast track programs.  That is, due to the wide variability in rules from country to country, it is both costly and time consuming for applicants and their patent attorneys to select which programs to utilize, to determine whether and how to utilize such programs, and to prepare separate submissions for different programs.

With a harmonized system, there would be no extra legwork, and a single submission – a brief statement of the invention and a conforming patent application – could be filed in each participating patent office.

In my view, the rules for a harmonized green patent fast track system should use a balanced approach that maximizes subject matter eligibility to boost participation yet imposes reasonable process restrictions to prevent significant increases in the workload of patent examiners.

More particularly, the programs should be open to any patent application directed to an invention that confers a “material environment benefit,” a standard which is both expansive, yet with some oversight should keep out putative non-green technology free riders.

Certain restrictions should apply to participating patent applications, however, such as a limit on the total number of claims (I propose 15), the number of independent claims (I propose 2), and limitation to a single invention with a telephonic or email election required should the examiner deem otherwise.

The article concludes that this standardized and balanced international system of expedited examination for green patent applications would encourage greater participation in the fast track programs and reduce the time to grant for a larger number of green patents, thereby fostering development and diffusion of green technologies.

Calxeda is an Austin, Texas, company that develops data center efficiency solutions.  The company’s EnergyCore technology provides power-efficient data center architecture for large computer environments such as web servers, media streaming infrastructure and cloud storage.

Calxeda owns at least one U.S. patent and three pending patent applications.  U.S. Patent No. 8,180,996 is entitled “Distributed computing system with universal address system and method” and directed to a distributed computing system having enhanced distributed storage and a universal address system (‘996 Patent).

Granted in May 2012, the ‘996 Patent teaches computer units featuring ARM processing cores, which Calxeda’s web site describes as “ultra-efficient” and the “heart” of the EnergyCore architecture.  According to this Greentech Media piece on the company, ARM chips are common in the cell phone market and consume considerably less power than Intel chips.

U.S. Patent Application Publication No. 2011/0103391 (‘391 Application) relates to Calxeda’s fabric switch for interconnecting multiple EnergyCore systems.  Entitled “System and method for high-performance, low-power data center interconnect fabric,” the ‘391 Application is directed to a switch and switch fabric system for routing data through a plurality of nodes.

FIG. 5A illustrates an exemplary switch (900) having four areas of interest (910a-d) where area 910a corresponds to Ethernet packets between the CPUs and Media Access Controls (MACs), area 910b corresponds to Ethernet frames at the Ethernet physical interface at the inside MACs, area 910c corresponds to Ethernet frames at the Ethernet physical interface at the outside MAC, and area 910d corresponds to Ethernet packets between the processor of routing header (901) and outside MAC (904).

The operating system device drivers of A9 cores (905) manage and control Inside Eth0 (902) and Inside Eth1 MAC (903).  The device driver of management processor (906) manages and controls Inside Eth2 MAC (907).  Outside Eth MAC (904) is not controlled by a device driver, but instead is configured to pass all frames with any filtering for network monitoring.

The ‘391 Application describes the asymmetric MAC architecture as follows:

The inside MACs have the Ethernet physical signaling interface into the routing header processor, and the outside MAC has an Ethernet packet interface into the routing header processor.  Thus the MAC IP is re-purposed for inside MACs and outside MACs, and what would normally be the physical signaling for the MAC to feed into the switch is leveraged.

According to the ‘391 Application, the invention reduces the size and power requirements of data centers.  Specifically, the invention fills a need for “a system and method for packet switching functionality focused on network aggregation that reduces the size and power requirements of typical systems while reducing cost all at the same time.”

The above-mentioned Greentech Media article says that Calxeda will be scaling up and expanding to new markets thanks to a recent $55 million funding round.

Totaro & Associates has completed the second phase of a study which began in December 2010 on the patent landscape of the horizontal-axis, utility-scale wind industry.  We have now read and classified over 23,100 global patents and applications, with over 3,200 issued patents in the US alone.

As we have highlighted in previous posts (here and here) on our wind turbine patent landscape, the analysis looks at the breadth of patent claim coverage and the use of that patent-protected technology within the industry.  Close to 11% of patents in any given country can be classified as high risk patents, or those which have broad claim breadth that covers technology which is being used by at least one other turbine vendor besides the patent holder.

This analysis, and the creation of risk profiles for each turbine OEM product offering, has provided clarity on the scope of potential patent infringement risks of any turbine topology or drivetrain architecture, regardless of turbine OEM. 

The OEMs are far and away the largest holders of all these patents and the overwhelming majority, more than 95% of high risk patents are held by the turbine OEMs and key sub-component suppliers.  These patent holders are keen to protect their intellectual property rights in the current market climate.

Presently there are some turbine OEMs who are not willing to provide full indemnity to turbine purchasers in the supply agreements, even though the OEMs receive full indemnity from sub-component suppliers when they buy a generator or a blade or even a tower.  Vertically integrated OEMs have even more work to do themselves when it comes to ensuring they have freedom to practice, since they retain more liability due to an increased scope of supply.

Proactive companies as well as most of the larger OEMs are willing to allocate resources to evaluate patent infringement risk and undertake mitigation strategies such as licensing or even a freedom to practice analysis prior to product launch.  The cost of licensing can be prohibitive to competitive cost of energy, so most of the smaller OEMs and those who do not have a large presence in a given market will not opt to undertake a freedom to practice project.

Patent infringement risk is shared by all (see Table 1), especially in cases where the OEM is not engaging in appropriate risk mitigation activities on its own.  Even those who do may only pay attention to the hot button issues at the urging of financiers or outside counsel, especially those patents in active litigation.  Hundreds of relevant patents are often missed leaving a veil of ignorance covering a gaping whole.

Table 1

The cause of the gap lies in the search protocol typically used by most IP professionals.  Taking an example of a patent database search in the US for issued patents related to the keywords (“wind turbine” and “power factor control”) nets 118 results.  The same search conducted in the Totaro & Associates patent landscape not only yields more comprehensive results with 156, but provides an analysis of patent infringement risk:

The generic keyword based search also turns up numerous false-positive results including: 

• US7580777    Modular aircraft control system and method
• US6936947     Turbo generator plant with a high voltage electric generator
• US6894416     Hydro-generator plant

While ignorance of the patent rights of a competitor may avoid treble damages in patent infringement litigation, such ignorance is not the best way to quantify and mitigate risk.  It can still create a PR and sales issue if assertion and/or lawsuits arise.  Even though it can seem like there are an infinite number of patents out there, the numbers are actually finite, albeit substantial.

During market conditions where revenue from turbine sales is diminishing, everyone needs to be cognizant of the OEMs willingness to make up for those shortfalls by enforcement of intellectual property rights.  Developers and financiers need to ask for more in the way of indemnity in a turbine supply agreement, and seek independent verification of patent infringement risks. 

If insurance is used as a risk mitigation strategy, the providers need to be cognizant of the scope of work performed by the turbine suppliers and the potential shortcomings of those efforts.

It may be a mountain to climb, but the summit can be reached and in this case having a guide can make all the difference.

*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.

 

A previous post discussed Honeywell’s patent infringement suit against Nest Labs (Nest) asserting seven thermostat control patents.  Since then Nest has requested that the U.S. Patent and Trademark Office (USPTO) reexamine all seven of the patents-in-suit.

A reexamination proceeding allows a third party to submit prior art to the USPTO in connection with a patent and have that patent re-enter the prosecution, or examination, process with respect to the submitted prior art.  For the USPTO to grant the request, the requester must demonstrate that the prior art raises a “substantial new question of patentability.” 

Even though the reexamination fee is hefty ($17,750), it is still in most cases a cheaper way of trying to invalidate a patent than by federal court litigation.

Over the last couple of months, starting on August 17th, the USPTO has been issuing office actions rejecting the reexamined claims of Honeywell’s patents one by one.  The seventh and last Honeywell patent was rejected by an office action issued October 11th.

The list of patents and the respective office actions are provided below:

 7,634,504, entitled “Natural Language Installer Setup for Controller,” describes inventions directed at simplifying methods that use natural language to program a thermostat (‘504 Patent).  Here is the office action issued in connection with the ‘504 Patent.

7,142,948, entitled “Controller Interface With Dynamic Schedule Display,” describes methods for operating a thermostat including calculating the time anticipated to reach a particular set temperature (‘948 Patent).  Here is the office action issued in connection with the ‘948 Patent.

6,975,958, entitled “Profile Based Method for Deriving a Temperature Setpoint Using a ‘Delta’ Based On Cross-Indexing a Received Price-Point Level Signal,” describes a method for reducing energy costs by controlling a thermostat from information stored in a remote location (‘958 Patent).  Here is the office action issued in connection with the ‘958 Patent.

7,584,899, entitled “HVAC Controller,” describes an HVAC controller that has a rotatable part which can control one or more parameters of the HVAC system (‘899 Patent).  Here is the office action issued in connection with the ‘899 Patent.

7,159,789, entitled “Thermostat with Mechanical User Interface” (‘789 Patent), describes an apparatus for locating a non-rotating part of a thermostat inside of a rotating part, while allowing the rotating part to set and/or control different parameters of the thermostat.  Here is the office action issued in connection with the ‘789 Patent.

7,159,790 entitled “Thermostat with Offset Drive,” (‘790 Patent), is related to the ‘789 Patent and describes the same inventions.  Here is the office action issued in connection with the ‘790 Patent.

7,476,988, entitled “Power Stealing Control Devices” (‘988 Patent), describes a power stealing device, whereby a thermostat can divert, or skim, a small amount of electrical charge from a home’s electrical system.   Here is the office action issued in connection with the ‘988 Patent.

The accused products are the Nest Thermostats (shown here):

Obviously, these office actions are a string of good news for Nest.  Note, however, that these are initial rejections.  Honeywell can, and certainly will, argue against the rejections and/or amend the claims to overcome them.