Green Patent Blog is on vacation.

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As the sales of wind turbines increase, it is likely that the disputes between suppliers and purchasers will also increase.  Wind turbines encompass a variety of tangible and intangible components, including the software necessary for operations and maintenance. 

One contractual issue that turbine suppliers and purchasers may dispute is what the supplier believes is proprietary information, but the purchaser and now owner, believes is necessary to the turbine operation and maintenance and to protect its investment after the warranty period expires.

After the sale of a wind turbine, but during the warranty period, the supplier is responsible for ensuring the turbine is operating successfully and the purchaser of a wind turbine is often provided access to the wind turbine data necessary for maintenance and monitoring of systems.

This includes the software licenses utilized by the supplier for remote monitoring, which is typically referred to as the Supervisory Control And Data Acquisition (“SCADA”) system.  Consequently, when the warranty period expires, and the supplier withholds the SCADA information, the purchaser is left in a bind.

Following the expiration of a wind turbine’s warranty period, the purchaser of the turbine should be granted unrestricted and full access to the SCADA system, software, and access codes for automated control capabilities in order to effectively and efficiently perform on-going maintenance and monitoring, to resolve and restore turbine operations following fault conditions to ensure wind turbines meet investment objectives, and comply with permits and grid control requirements.

Generally, SCADA systems allow remote access to a device to monitor and maintain the device.  For example, the OnStar® system used by General Motors (“GM”) in its vehicles would likely be considered a SCADA system.  For a monthly fee, OnStar® remotely monitors and accesses the vehicle, and includes features such as “automatic crash response,” where the system automatically sends information to a remote center in the event of a collision; vehicle diagnostic and maintenance information; and the ability to remotely shut down a stolen vehicle.

Now imagine you purchased a GM vehicle equipped with OnStar®.  Assume the information provided by OnStar® was necessary to the vehicle’s operation and maintenance.  You enjoyed all of the features of OnStar®, but after the OnStar® warranty expired, you wanted to switch to another (fictional) company, MonITor. 

However, GM was unwilling to provide you, or MonITor, the information necessary to access the vehicle’s software system.  And, without the access codes to the software, you were unable to use the vehicle.  In other words, without OnStar®, you did not have a vehicle, but merely a nice place to sit.  However, GM was willing to extend your existing OnStar® contract with them, for a fee of course. 

Currently, some wind turbine owners face a similar situation. In these cases, the wind turbine purchaser is comparable to the vehicle owner.  During the warranty period, the purchaser is (1) granted a limited right to use the software supplied; (2) provided access to the turbine data necessary for maintaining and monitoring systems; and (3) provided access to the codes and software licenses utilized by the supplier for performing services such as remote monitoring and reports. 

If the turbine is not operating, or not operating efficiently, the purchaser needs access to the SCADA system to restore the turbine to peak operating conditions, and to ensure it’s meeting the regulatory requirements for operating the turbine or the owner will lose money on its investment. 

Some SCADA systems for wind turbines are protected by patents.  For example, GE owns U.S. Patent 7,013,203, which claims “[a] supervisory command and data acquisition (SCADA) system to manage a wind farm.” 

SCADA system software should be protected under patent law and doctrine because the combination of patent protection and patent exhaustion would balance the rights of turbine suppliers and owners. 

As stated in the Supreme Court’s Quanta Computer opinion, the patent exhaustion doctrine,  “provides the initial authorized sale of a patented item terminates all patent rights to that item.”

In Quanta, the Court held that the doctrine of patent exhaustion applies to the authorized sale of a components that “substantially embody” a method patent and reaffirmed that “the right to vend is exhausted by a single, unconditional sale, the article sold being thereby carried outside the monopoly of the patent law and rendered free of every restriction which the vendor may attempt to put on it.”

This situation, in which the purchaser of a wind turbine was merely granted a non-exclusive license to use copyrighted SCADA software, is comparable to the Quanta case.  First, for the sale of the wind turbine itself, the patent exhaustion doctrine “provides that the initial authorized sale of a patented item terminates all patent rights to that item.” 

The sales of wind turbines as tangible products that incorporated method patents, such as the SCADA software, should exhaust the wind turbine supplier’s patent rights (or copyright) because the purchaser cannot practice the wind turbine, nor does it function at all, until the wind turbines are combined with a computer system.  Thus, the wind turbines substantially embodied the SCADA system software because they had no reasonable noninfringing use and included all of the inventive aspects of the patented methods.

Secondly, the  SCADA license should be comparable to the license of a method patent and patent exhaustion should apply, even if the software is copyrighted.  Here, the SCADA system software is comparable to a method patent, and patent holders could avoid exhaustion by using copyrights, when they should use patents to protect the SCADA software.

Thus, the patent exhaustion doctrine should apply, and the sale of the software in the presumably patented wind turbine should exhaust the rights to the software, even if it is protected under copyright law.

The wind turbine supplier certainly has the right to protect proprietary information, but it is the purchaser who has the most to lose.  The purchaser has a substantial investment in the tangible wind turbine itself, and needs the ability to continue operating and maintaining the turbine after the warranty period expires.  Without access to the necessary information, the pruchaser might be unjustly forced to continue its contract with the supplier.

The patent exhaustion doctrine should be used for SCADA software purchased in conjunction with a wind turbine, which will necessarily change the type of enforcement of intellectual property rights available to companies for licenses of SCADA software sold in conjunction with wind turbines.

*Sara Kelley is currently in her third and final year at Thomas Jefferson School of Law in San Diego.  She received her undergraduate degree in Civil Engineering from San Diego State University.

This is the third of three posts highlighting work by students who took my seminar class - Green Technology, Climate Change, and Intellectual Property Law –  this semester at Thomas Jefferson School of Law.  – Ed.

Greenwashing, the concept of self-promotion through misrepresenting the greenness of one’s own product, has been well documented (see, e.g., here and here). 

This ploy is designed to take advantage of green consumers, captivating their attention by falsely promoting how a company’s product might have been made or how it can be disposed of, including false or exaggerated claims of the “greenness” of the production process or the product’s recyclability. 

There are protections already in place that are designed to punish and deter such practice.  However, greenwashing might be just half of the problem.  In recent years, a newer, equally disturbing trend has emerged in the green marketplace. This unfortunate trend has been dubbed “reverse greenwashing.” 

Much like greenwashing, reverse greenwashing is a process of misrepresenting or misshaping facts to promote sales.  However, unlike greenwashing, reverse greenwashing is the process of misrepresenting facts relating to someone else’s products – downplaying or attacking the “greenness” of that other product in an effort to boost the credibility and sales of one’s own product. 

There are several severe consequences to allowing rampant reverse greenwashing to occur. Most notably, there is a potential massive evasion of consumption by the victim company’s target market, the green consumers, which could seemingly cripple that company’s bottom line.

Much like greenwashing, rampant, unchecked reverse greenwashing could reward a company for promoting its product in all the wrong ways, resulting in a harming of those consumers who were duped into purchasing one product at the expense of another’s. 

Lastly, the environment could be harmed by these reverse greenwashing strategies, as consumers could potentially be avoiding the purchase of actual green and environmentally safe products and instead result in the purchase of products that might be less green than originally thought.

These are just some of the potential ill effects of greenwashing – which begs the question, how can we protect consumers and the environment from reverse green washing? 

The Federal Trade Commission, an independent agency of the U.S. government responsible for consumer protection introduced the “Green Guides” in 1992.  These Green Guides were created to ensure fair practice methods, requiring marketers of green products to substantiate the claims regarding their products, in effect protecting consumers from the ill effects of green washing.  Multiple revisions have been made to these Green Guides, most recently in October of 2012. 

However, the question remains, do the Green Guides apply in the context of reverse greenwashing?  Due to the suddenness of the trend and lack of case law involving issues of reverse greenwashing, this question has yet to be definitively answered.  

The most recent and most publicized case involving claims of reverse greenwashing was that of Hilex Company v. ChicoEco, in which ChicoEco, maker of the popular ChicoBag, was accused of misrepresentating claims regarding the environmental impact of single use plastic bags in order to boost their own sales. 

However, this case settled just months after the filing of the complaint, never resolving the issue of whether these Green Guides actually apply in the context of reverse green washing. 

Due to the recency of this trend, there has not been much discussion on the topic of protecting potential victims of reverse green washing.  The Guides were originally designed to buck the trend of greenwashing. 

Although the Green Guides have not specifically addressed reverse greenwashing, there is some language in the guides and later revisions that might lead a reasonable person to believe that they could be interpreted to intend to prevent this variation on greenwashing.

More particularly, the General Principles of the 2012 Green Guides are covered in section 260.3 and state that the Guides apply to all environmental marketing claims: 

            [t]he following general principles apply to all environmental marketing claims…

A reasonable interpretation is that this language is intended to include all or every type of environmental claim, not just greenwashing, but can extend to the context of reverse greenwashing as well.  Without further reading of the Guides, a simple conclusion can be made, which is that these guides must have meant to address reverse greenwashing.  After all, what language is more inclusive than the word all?

Unlike the previous versions of the Guides published in 1992, 1996, and 1998, the 2012 Guides include specific examples of the types of claims that are being discussed under the headings.  The 2012 guides are substantially more in depth than the previous editions, with the newest revisions being six times larger than the previous revision made in 1998. 

Most relevant to this discussion is Section 260.3(d), which addresses General Principles and Comparative Claims.  This section was not included in the previous versions of the guides. 

The language of this section states:

comparative environmental marketing claim should be clear to avoid consumer confusion about the comparison.  Marketers should have substantiation for the comparison.  (emphasis added).

The Guides also provide several examples of the types of claims these cover.  Example 3 under 260.3(d) states as follows:

An advertiser claims that its packaging creates “less waste than the leading national brand.” The advertiser implemented the source reduction several years ago and supported the claim by calculating the relative solid waste contributions of the two packages. The advertiser should have substantiation that the comparison remains accurate. (emphasis added).

Is this the Federal Trade Commission’s attempt at addressing the issue of reverse greenwashing?  Or is “less than the leading national brand” too generic of an example? 

The Hilex complaint addresses multiple specific claims made by ChicoBag regarding the adverse environmental effects of Hilex’s plastic bags.   Hilex, however, brought suit in 2011 – a year before these Guides were officially published.  Their only basis of contention that the Green Guides address reverse greenwashing could be under the 1998 Guides’ 260.3’s General Provisions. 

Per Roscoe B. Starek, III, past Commissioner of the FTC:

“…comparative claims should be clear so that consumers know whether the comparison is to a previous version of the advertiser’s product or to a competitor’s product.” 

Is this the Federal Trade Commission’s attempt at addressing reverse greenwashing?  It is very difficult to tell, as this statement and the Green Guides’ 2010 proposed revisions came out prior to the Hilex case.   Therefore, they were likely speaking more in generalities rather than addressing a specific trend of reverse greenwashing.

Although the FTC seemingly tailored these guides to avoid trends of greenwashing in the 1990’s, the numerous revisions over the years show the FTC’s growing concern about consumer protection.  Although the language of the guides make it clear that the Guides should apply in the context of reverse greenwashing, we must patiently await a Court decision that suggests that they, in fact, do apply.

In any event, the Federal Trade Commission should revise the Green Guides to specifically address reverse greenwashing, as it has always been the intent of the Federal Trade Commission to address any and all issues arising in the green advertising context to make the Green Guides as comprehensive and as clear as possible.

*Brandon Simon is currently in his third and final year at Thomas Jefferson School of Law and is a senior law clerk at The Simon Law Group, LLP a practice dedicated solely to personal injury. He received his undergraduate degree in Business Administration in 2009 from George Washington University.

This is the second of three posts highlighting work by students who took my seminar class - Green Technology, Climate Change, and Intellectual Property Law –  this semester at Thomas Jefferson School of Law.  – Ed.

This country has started to pay a lot of attention to solar, wind, and clean coal technologies.  But why does nuclear get shunned from the spotlight?

The United States gets 20 percent of its energy from nuclear power, third behind coal and natural gas. How many ads have you seen for “clean coal” or natural gas in the last year? But when was the last time anyone saw an ad on television for recycling nuclear fuel?

The most basic of environmental actions is recycling, but unlike other countries, we do not recycle our fuel rods. Instead of recycling the fuel rods, new material is mined, enriched, and used as fuel.

With a limited supply of natural resources, and the consumption of resources to store the used fuel, we need make this source of power more environmentally friendly. One of the most basic paths to reducing environmental impact is recycling.

I.  Why Recycle?

Nuclear reactors use only five percent of the fissionable material in a fuel rod. However, instead of putting that 95 percent to use generating power, the United States puts it in temporary storage. As of 2011, 65,000 metric tons of nuclear fuel rods are being stored in the U.S., almost all at the individual reactor sites.

If the technology exists and is safely being used by our international friends, and the U.S. thinks of itself as a world leader, why are we not recycling? It is estimated that if we recycled the fuel rods that are currently seen as waste, we would have enough energy to power the entire country for more than 12 years. That is a lot of fossil–free energy

Nuclear power is in use in over 30 countries. The technology to recycle nuclear fuel exists, and in use in six countries today – but not in the country that essentially started the nuclear field. France gets 78 percent of their power from nuclear energy. They recycle their fuel, are not in the news for nuclear incidents or security issues.

In the United Kingdom, it is a similar story. They get 19 percent of their power from nuclear energy and they recycle.

2.  The Opposition

Unfortunately, the nuclear industry suffers from a stigma in this country. Part of this stigma goes back to the fact that nuclear power was introduced to this country as a weapon – something to be feared. In many ways that fear persists today, and has hampered our implementation of newer technologies. Technology born in this country, and improved upon and implemented in other countries, should come home.

At one point, not recycling was a political decision. In 1976, the Federal government banned nuclear recycling. At that time, there was a national security concern involving nuclear energy. Considering the time – the cold war – it is understandable. The laws have since changed, but not the mindset. The country – the world – is going green, and it is time for our nuclear energy program to get with the times.

There are two major points of opposition to recycling spent fuel. The first is cost, and the second is security – specifically proliferation of plutonium. While both are legitimate concerns, their magnitude is not as significant as they claim to be.

There are some that argue that the cost of recycling nuclear fuel is too high. Then again, there are people that say the cost of alternative energy is too high. Yet, as a society, we have decided that the benefits of alternative energy outweigh the upfront costs of design and implementation, as well as the increased cost of the power.

But the government needs to help. Recently, the United States government spent $1.5 billion to support renewable energy, but spent over twice as much to support fossil fuels. If the government continues to favor fossil fuels, going green will be even harder.

The cost of designing, licensing, constructing/modifying, and operating a facility to recycle nuclear fuel rods is high. However, just like alternative energy, it is done for the greater good – to help the environment. Just like recycling of other products, there is less mining, transportation, and waste.

By lowering the amount of mining and waste, there is a benefit to society and the environment. That benefit is hard to put into dollars, yet we seen past that issue for solar and wind energy.

III.  The Technology

As with most things, there is more than one approach to nuclear recycling. One approach is to recycle the current stockpile of spent fuel. This is referred to as reprocessing, and is currently being done outside the U.S. using the PUREX process.

The second approach is a closed cycle reactor system. A closed cycle design incorporates recycling into the process so that the fuel is regenerated. This is a called a “breeder” reactor for its ability to create its own fuel.

 

A.  Reprocessing

The technology to reprocess spent nuclear fuel has been around for over 65 years. In 1960, the Atomic Energy Commission (predecessor of the U.S. Department of Energy) was granted U.S. Patent No. 2,924,506 (‘506 Patent) from an application filed in 1947.

The ‘506 Patent is for an extraction process using a solvent–based solution to separate plutonium from an aqueous solution. In essence, the process separates usable materials from transuranic waste and other elements generated during nuclear fission so the usable materials can be reprocessed into new fuel rods.

Despite the fact that commercial reprocessing is not done in the United States, the DOE is funding work on technology related to reprocessing nuclear fuel. This work is typically done at the national laboratories, specifically Idaho National Laboratory, Oak Ridge National Lab, and Argonne National Laboratory. 

The ‘506 Patent is just one of the 151 patents DOE has been granted since 1956 involving nuclear fuel reprocessing, for technologies range from the processes and chemical solutions, to the containers for the fuel rods.

The ‘506 patent is cited as prior art for three patents, two of which are important technological offshoots. In 1976, the United Kingdom Atomic Energy Authority was granted U.S. Patent No. 3,959,435 (‘435 Patent). This patent uses a nitric acid solution to reduce the mount of tributyl phosphate used in the PUREX process.

In 1984, Kernforschungszentrum Karlsruhe GmbH in Germany was granted U.S. Patent No. 4,442,071 (‘071 Patent). This innovation changes the PUREX process to utilize sulfuric acid. While these two variants of the PUREX process are not compatible, both have provided a basis for a significant number of future patents.

Battelle LLC, with DOE provided funding, recently filed U.S. Patent Application Publication No. 2011/0250108. This patent application claims the invention improves the reprocessing of fuel used in light water reactors by reducing the number of steps, making the process safer, and reducing cost.

There are modifications to the PUREX process designed for specific purposes. TRUEX is a modified PUREX process that removes transuranics (TRU) during reprocessing. This process was created in the U.S., and two of the patents came out of Argonne National Laboratory (U.S. Patent Nos. 4,548,790 and 4,574,072).

DIAMEX (DIAMideEXtraction) process uses different chemicals to avoid the creation of gases that could lead to acid rain. The DIAMEX process is a French innovation, and patented in the U.S. under U.S. Patent Nos. 4,572,802 and 4,938,871.

There is also SANEX (Selective ActiNide Extraction) (see, e.g., U.S. Patent Nos. 4,461,747, 4,867,951, and 5,256,383), which allows the separation of actinides and lanthanides in the PUREX process. There are no less than five other modified methods currently in use or under development.

Additional work is focused on the non–proliferation issue. To that end, modifications to the PUREX process are being tested that would prevent pure plutonium from being separated during reprocessing. One of these is called UREX (URranium EXtraction). UREX is designed to prevent plutonium from being extracted during reprocessing, and reduce the amount of waste requiring long–term storage.

Because some of these modifications only target one aspect of the PUREX process, they can be used together. For example, the UREX+ and UREX–1a processes each use four of the modifications, but the combinations are different.

U.S. Patent No. 7,854,907 is focused on targeting the separation of technetium during fuel reprocessing was granted in 2010. This process claims to be applicable to UREX and UREX+ reprocessing methods. Operators are able to adjust the PUREX process by combining the different modifications in order to achieve change the elements or combination of elements at the end of the process.

One of the most recent technological developments to the PUREX process comes from France. The process, named COEX™, was granted U.S. Patent No. 7,887,767 in the U.S. in 2011. This modification of the PUREX process keeps the plutonium with uranium together during the reprocessing, but allows uranium to be separated out. This addresses the non–proliferation concern. It also reduces the number of steps involved in reprocessing.

B.  Fast Reactors and Breeder Reactors

Fast reactors are a different type of nuclear reactor. Unlike most commercial reactors, a fast reactor does not slow fission neutrons. As a result, these neutrons cause more fission as they collide with fissile nuclei. The concept for fact reactors was patented in 1965 by U.S. Patent No. 3,212,982.

Breeder reactors are a type of fast reactor that can produce more fission material than they consume. Beloyarsk 3 in Russia is a BN–600 reactor, and is currently the only commercial fast reactor (but has not been used to breed fuel). These reactors used a liquid metal, liquid sodium, something that was covered by U.S. Patent No. 3,498,880 by the French Atomic Energy Commission in 1966.

When the reactor is set to match burning and production, it becomes a self-contained power generator. That means that over the operational life of the reactor, no new fuel need be brought in, and no waste would be removed from the site.

In the early 1980’s, Argonne West reconfigured the Experimental Breeder Reactor–II (EBR–II), and tested what is known as an Integral Fast Reactor (IFR). The IFR program combined different technologies, such as electrorefining, metallic fuel, a passive cooling system, and a sodium cooled reactor, to achieve the goal of eliminating the two biggest concerns regarding nuclear energy, proliferation of weapons grade materials and nuclear meltdown.

One of the technologies came from General Electric, which worked on the reactor design and obtained U.S. Patent No. 4,508,677 describing a small, modular reactor design.[1]

Safety is always a concern when it comes to nuclear power. As seen in Japan, loss of cooling to reactors is a major problem. The designers of IFR knew this, and set out to remedy the issue – and they did. The IFR passively shuts down when cooling is compromised.

The IFR was designed to solve the two major concerns of nuclear power, but the design is also important to recycling efforts. The IFR can use spent nuclear waste for fuel. Just as the IFR consumes transuranics in its own fuel, it can start the reaction process using transuranic elements in spent fuel from our current reactors. This provides an additional method of recycling the spent nuclear fuel we have now.

This also means that weapons grade material, such as plutonium from dismantled weapons, can be processed with other fuels in the reactor making them unusable for military applications. Because the IFR can be consumed, breed, or match burning and production, the reactor can be used for different purposes.

As a consumer, IFR can use the current spent fuel and military waste for fuel. There would be waste generated, but not like the spent fuel we have now. In order to prevent the proliferation of nuclear material, the IFR was designed to commingle elements, not separate or purify. The waste generated from an IFR reactor can be separated so that the actual “waste” volume is reduce, as well as the time need for safe storage.

The technology used to separate the plutonium with uranium from the waste is electrorefining. The process described in U.S. Patent No. 5,336,450 (‘450 Patent) was designed to work with the IFR reactor.

One of the significant advancements over previous electrorefining methods, such as the “Process to Separate Transuranic Elements from Nuclear Waste” described in U.S. Patent No. 4,814,046, is that the ‘450 Patent process is a semi–continuous process as opposed to a batch process.

C.  The Future of IFR and Fast Reactors

General Electric is in the process of developing a reactor named PRISM (Power Reactor Innovative Small Module). The design underwent a pre–application review in the early 1990’s, and benefited the IFR program. PRISM is a sodium cooled, metal fuel design reactor very similar to IFR. This is because General Electric worked on the reactor design of the IFR project.

Also, the fuel for PRISM was tested as part of the IFR program. One of differences is that IFR uses a metal alloy fuel, and PRISM can use ceramic or metal fuel. In an effort to commercialize PRISM, GE’s small modular approach is designed to be scaled up by adding additional units, as described in U.S. Patent No. 6,185,269, and on GE’s website.

Fast breeder reactors, specifically the IFR, are not being commercially utilized in the United States, though interest, as well as research and advancements related to the technology continue.

Earlier this year, Sandia National Laboratory released a report considering licensing of sodium fast reactors, such as IFR. The report concluded there were two challenges regarding resurrecting the IFR project. The first is recovering the historical data from the project. The second is integrating the technological advancements to the components of the system.

One of the improved pieces is the electrorefiner used to separate uranium and other transuranic elements, specifically plutonium, from spent fuel. Argonne National Laboratory has continued to work on this technology since, and was granted U.S. Patent No. 8,097,142 in January 2012 for their most recent innovation. This technology continues to be important because non–proliferation is still a concern with reprocessing of spent fuel.

 

IV.  Conclusion

These technologies are moving forward, but our domestic implementation is lacking. Nuclear energy can be greener, and the technology exists to make it happen. Implementing these types of technologies will significantly reduce the amount of nuclear waste generated and stored.

Additionally, these technologies will minimize the environmental impact of the energy we consume by reducing mining, and the amount of carbon dioxide generated by fossil fuels. The merits of the technologies created and tested in the United States have been proven, and PUREX is in commercial use. The United States should tackle the challenge today instead of passing the burden to future generations. 

It is time to reduce our environmental impact, update our nuclear technology, and recycle our nuclear fuel.

*Michael Morphew is in his second year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Business Administration from the University of Washington in Seattle.

This is the first of three posts highlighting work by students who took my seminar class - Green Technology, Climate Change, and Intellectual Property Law –  this semester at Thomas Jefferson School of Law.  – Ed.

In November 2001, Doha hosted trade talks over intellectual property and public health. The discussions resulted in the landmark Doha Declaration on the TRIPS Agreement and Public Health.

The Doha Declaration recognised “that the TRIPS Agreement does not and should not prevent members from taking measures to protect public health” – particularly in relation to HIV/AIDS, tuberculosis, malaria and other epidemics.

More than a decade on, in December 2012, Doha hosted the international climate talks for parties to the United Nations Framework Convention on Climate Change 1992 and the Kyoto Protocol 1997.

There was, once again, a contentious debate over intellectual property – this time in relation to clean technologies. The Climate Action Network argued that there should be a Declaration on Intellectual Property and Climate Change to facilitate the “rapid and efficient uptake of technologies to address mitigation and adaptation”.

Disappointingly, the 2012 Doha Climate talks resulted in no declaration or agreement on intellectual property and clean technologies. Indeed, the discussions on intellectual property were deadlocked. There was instead a cluster of decisions known as the Doha Climate Gateway.

While such decisions did not address intellectual property or open innovation, the Doha Climate Gateway selected the United Nations Environment Programme to host the UNFCCC Climate Technology Centre.

Intellectual Property and Clean Technologies

In the debate over the Doha climate talks, there was division over whether there should be text in respect of intellectual property and clean technologies.

China said, “We’re not going to request technology transfer free of charge. We certainly respect intellectual property rights.”

South Africa argued the talks should address “questions of equitable access to sustainable development, intellectual property rights and unilateral trade measures.”

The Philippines requested that the Technology Executive Committee consider issues “related to intellectual property rights as they arise in the development and transfer of technologies.” The country was particularly concerned about the need to address climate emergencies.

The Progressive Latin Americans – such as Venezuela – mooted text on a wide range of co-operative measures on intellectual property and climate change.

A Green Intellectual Property Exchange?

There was also significant discussion of co-operative models for facilitating open access to clean technologies.

In their book MacroWikinomics, Don Tapscott and Anthony Williams have called for the establishment of a green technology commons, sharing humanity’s knowledge of sustainable technologies.

The Creative Commons – celebrating its 10th birthday – has established the GreenXChange.

The Climate Action Network has proposed building on such a model, and establishing an intellectual property exchange to “enable secure, efficient and transparent arms-length transactions for intellectual property licensing”.

India put forward compromise text on intellectual property and climate change. India’s lead negotiator, Mira Mehrishi, called for a fund to enable access to clean technologies with intellectual property rights. Mehrishi commented: “If we don’t get cheap technology we will never be able to adapt to climate change.”

However, developed countries rebuffed such compromises.

Intellectual Property, Piracy, and Climate Change

As noted by attendee Michael Mazengarb, developed countries said there should be strong enforcement of intellectual property to encourage investment in clean technologies.

The United States and the European Union insisted that the Doha Climate Gateway should be silent on intellectual property. Other developed countries argued that other forums – such as the World Trade Organization and the World Intellectual Property Organization – would be better placed to address intellectual property and climate change.

It is striking that, while intellectual property was a taboo subject in the Doha climate talks, the United States simultaneously pressed for an expansionist chapter on intellectual property in the Auckland talks on the Trans-Pacific Partnership.

Indeed, the Edison Electric Institute – which represented United States energy companies in climate discussions – promoted the controversial Trans-Pacific Partnership as a preferable model where “global innovation is maximized” and “intellectual property rights are adequately protected”.

The Climate Technology Centre

The Copenhagen Accord 2009, the Cancun Decisions 2010, and the Durban Platform 2011 established the foundations of a technology mechanism – a UNFCCC Climate Technology Centre and Network.

In the lead-up to the Doha negotiations, the Technology Executive Committee asked for greater clarity about the Climate Technology Centre’s role in matters of intellectual property.

The topic was discussed during the climate talks in Durban. Draft text on December 7, 2012 alluded to intellectual property, suggesting the Technology Executive Committee should be “examining effective mechanisms that promote access to affordable environmentally sound technologies, reward innovators and increase the dynamic of global innovation.” However, even such euphemistic language was erased in the end.

One of the key positive decisions of the Doha climate talks was the selection of the United Nations Environment Programme (UNEP) to host the UNFCCC Climate Technology Centre for an initial term of five years.

UNEP had put together a collaborative bid. The United Nations Industrial Development Organization (UNIDO) will be a co-manager. The partners of the consortium included research and scientific organisations in Thailand, India, Argentina, Costa Rica, Kenya, Germany, the Netherlands, Denmark, and the United States.

India will play a key role. The United States partner is the National Renewable Energy Laboratory – an innovator on a wide range of clean technologies.

The UNEP emphasized in its bid: “We will be driven by country needs, recognizing as well that weak institutions are often a barrier to the transfer of technologies and that developing the capabilities of developing countries is critical.”

The Executive Secretary of the UN Framework Convention on Climate Change, Christiana Figueres, was optimistic:

The world has the money and technology to stay below two degrees. After Doha, it is a matter of scale, speed, determination and sticking to the timetable.

* is an Australian Research Council Future Fellow, working on Intellectual Property and Climate Change.  He is an associate professor at the ANU College of Law, an associate director of the Australian Centre for Intellectual Property in Agriculture (ACIPA), and a director of the Australian Digital Alliance.

This post is adapted from an article previously published on The Conversation and re-published here with the kind permission of Matthew Rimmer.

A host of proposed class action lawsuits (e.g., Krauth-Hyundai Complaint; Quiroz-Kia Complaint; Graewingholt-Hyundai Kia Complaint; Olson-Hyundai Kia Complaint) have been filed in the last several weeks against one or both of Kia and Hyundai accusing the Korean automakers of making false or misleading fuel efficiency claims in their advertising and marketing materials.

At the heart of these “garden variety” greenwashing cases (see, e.g., here and here for examples of the other kinds) are allegations that the automakers built advertising campaigns around representations that a number of their vehicles achieved gas mileage in the 40 mile per gallon range when the companies knew or should have known the actual mileage was signficantly lower.  The mpg was also alleged to be misrepresented on many of the vehicles’ window stickers.

Some of the advertising statements cited in the cases include:

“With its 29 mpg city and 40 mpg highway standard fuel economy rating, Elantra is a perfect vehicle for consumers looking for an affordable solution to rising gas prices….”

“In the first quarter of 2012, 39 percent of all Hyundai vehicles sold achieved 40 mpg on the highway thanks in large part to Elantra’s continued success.”

The Hyundai Accent manages “a best-in-class standard 40 mpg fuel economy rating on the highway” and “achieves a category-leading 30 mpg city/40 mpg highway rating, making it one of four Hyundai nameplates to eclipse teh 40 mpg mark.”

Kia’s web site states that the Optima Hybrid, Rio, Soul, and Sportage have all received the EPA SmartWay Certification Mark – a designation given by the EPA “to the cleanest most fuel efficient vehicles.”

According to the complaints, an EPA investigation prompted by consumer inquiries found the gas mileage was overstated in seven Hyundai models and six Kia models, with as much as a 6 mpg discrepancy in some models.  The complaints further state that Kia and Hyundai admitted they had misrepresented mile per gallon and fuel efficiency data.

One complaint notes the historic significance of the EPA audit:

The EPA’s Hyundai/Kia investigation is the first instance where the EPA has found a large number of vehicles from the same manufacturers deviated significantly from the manufacturer represented mileage figures.

The problem, according to another complaint, was flawed fuel economy testing.  More particularly, Hyundai and Kia allegedly made procedural errors in their “coastdown” testing, implementing methods that were not compliant with EPA requirements and “insufficient in design, procedure, content, execution, and/or completeness.”  As a result, the fuel economy ratings were “affected, inaccurate, and overstated.”

One of the complaints notes that Kia and Hyundai said they would implement a “refund” program, but calls the program “fraught with problems.”  Instead, most of the actions seek injunctive relief relating to the companies’ advertising, restitution, and monetary damages.

“Defendants apparently placed profit before integrity in the marketing and sale” of their vehicles, one of the complaints summarizes.   That plaintiff also quoted an Edmonds analyst’s seemingly apt prediction:

“In an industry where reputation is so important, this will undoubtedly give both carmakers ugly black eyes.”

Part II:  Eilat, Israel

In my previous post, I discussed my observations regarding a current and future ‎Cleantech giant – China. As I noted in that post, I also spoke recently at an Israeli ‎Global Cleantech conference, held in Eilat in late November.

Israel has long been an ‎innovation leader in the Cleantech space, a phenomenon driven by the country’s ‎security needs and dearth of natural resources, coupled with a highly educated ‎workforce and established culture of technology innovation.

Interestingly, one of the ‎leading drivers of Cleantech innovation is the Israeli military, which is investing heavily ‎in developing renewable energy sources for its purposes. Of course, many of the ‎military-developed technologies can be easily adapted for civilian use. One example ‎is a portable water purification kit, originally developed for ‎military applications, but also useful for civilian hikers and campers. ‎

A major takeaway from the conference is that the Israeli focus on Cleantech innovation ‎is not wavering in the least. Conference attendees spanned the entire spectrum of ‎Cleantech technology areas, from solar to biofuels to wind.

Because of the start-up ‎nature of many of the Israeli companies in attendance, there was an unsurprising ‎focus on the financing of Cleantech innovation, whether via venture capital or through ‎strategic partnerships with larger corporations.

The importance of a robust patent ‎portfolio as an attractant for that investment was well-understood by the companies ‎exhibiting at the conference, irrespective of whether they were competing in a mature ‎market like solar, or looking to advance a disruptive technology in a less-crowded ‎Cleantech field.  Target markets for Israeli Cleantech products and services include the ‎USA, EU, China, Korea, and India amongst others.

In addition to the awareness of ‎intellectual property as a competitive mechanism, there was also a serious focus at the ‎conference on the importance of quality standards for implementation of Cleantech ‎products in the marketplace. One example discussed was a new Israeli electrical ‎standard applicable to electrical switchboards.‎

In many ways the conference reflected a mature Cleantech focus within the Israeli ‎business, government, and academic communities. While there was a definite ‎expressed interest in uncovering the next big thing in Cleantech, there was also a ‎decided interest in allocating money and brainpower towards tackling present and ‎solvable issues with existing technology.

Interestingly, there was a sizable Chinese ‎presence at the conference, and a spirit of potential future cooperation was in the air, ‎with China supplying the manufacturing capability and Israel the innovation.

And ‎while Israel rightly has earned its place as a net contributor of many promising new ‎Cleantech innovations, it was interesting to see how focused the domestic participants ‎were with also making sure that Israel keeps pace with the world in deploying existing ‎renewable energy technologies – to serve its own energy needs.

Whether that juggling ‎act is successful remains to be seen, but it was heartening to see and experience the ‎vast potential that a country classified as part of the developing world has to help ‎ensure a sustainable future for us all.‎

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

Part I:  Guangzhou, China

Cleantech innovation continues apace, despite the general economic malaise gripping ‎much of the world. Two countries that are heavily invested in renewable energy ‎development are China and Israel.

Despite their extreme differences in population, ‎size, and access to natural resources, these two countries have forced their way onto ‎the global Cleantech innovation stage. Not surprisingly, and as previously noted by ‎this blog, both countries have instituted expedited green patent programs, amongst ‎other policy initiatives aimed at fostering Cleantech innovation. ‎

Both countries recently hosted Cleantech conferences, where I was privileged to speak ‎on “Green” intellectual property issues, and advocate for increased awareness of those ‎issues on the part of the Cleantech business community.  

The first conference I attended was BIT’s 2nd New Energy Forum in Guangzhou, China, in mid-October.  One is ‎immediately struck by the tremendous economic vitality exhibited in Guangzhou, with ‎numerous ongoing construction projects neighboring a like number of recently ‎completed facilities.

With such rapid development on display, there clearly is a market ‎for sustainable products to use in construction in China. And at the conference itself, ‎numerous personalities from the academic and business worlds discussed the ‎importance of an engaged China in advancing the development and utilization of ‎sustainable products and services. ‎

Considering the number of attendees that I spoke to who were there on behalf of ‎various departments of the Chinese national and provincial government industries, it is ‎fair to assume that developing a viable Cleantech sector is an important initiative for ‎China.

And I noticed an increasing awareness among conference attendees of the ‎importance of intellectual property rights in fostering innovation, and for allowing ‎China to continue to compete globally. Even Chinese manufacturers are become ‎increasingly aware of the need to provide a safe home for foreign know-how, so that ‎innovative Cleantech companies will look to China as a manufacturing partner for their ‎products. ‎

Of course, many in China are sensitive to the reputation of their country in the global business ‎community.

Some officials I talked to were very invested in the ongoing trade dispute ‎regarding solar panels manufactured in China, and the allegations of price dumping ‎that are being pursued in some of China’s target export markets, including the USA. ‎While that dispute looks like it will be an ongoing one, the conference made clear that ‎China is interested in developing its Cleantech sector, and increasing its presence in ‎the Cleantech community worldwide.

It remains to be seen how tightly China will ‎adhere to enforcing intellectual property rights domestically, and whether Chinese ‎companies will act responsibly regarding intellectual property rights in foreign markets ‎as well.‎

Gaston Kroub is a partner in the New York office of Locke Lord Bissell & Liddell LLP.  Gaston serves as the co-chair of the Greentech Committee of the NYSBA’s IP Section and has been accredited as a LEED Green Associate.  Gaston is a registered patent attorney whose practice focuses on intellectual property litigation and counseling.

 

LightSail Energy (LightSail) is a Berkeley, California, company that has developed compressed air energy storage technology which may be used for grid-scale storage. 

The company’s central innovation is the injection of a mist of water spray into a compressed air system so the spray rapidly absorbs the heat energy of compression and provides the energy during expansion.

According to Cleantech PatentEdgeâ„¢, LightSail owns at least 52 US, international, and European patents and published applications.  U.S. Patent No. 8,240,142 (‘142 Patent) is one of a family of patents relating to the company’s compressed air energy storage system.

The ‘142 Patent is entitled “Compressed air energy storage system utilizing two-phase flow to facilitate heat exchange” and directed to a compressed air energy storage system (20) including a cylinder device (21) defining a chamber (22), a piston device (23) in the chamber, and a pressure cell (25).  The cylinder (21) and pressure cell (25) together form a one stage reversible pressure compression/expansion mechanism (24).

Air enters the system (20) via pipe (10), passes through a filter (26) and enters the cylinder chamber (22) via pipe (30) where it is compressed by the action of the piston (23).  Before compression begins, a liquid mist is introduced into the chamber (22) using an atomizing nozzle (44).  The volume of mist injected into the chamber (22) is predetermined to be the volume required to absorb all the heat generated during that piston stroke.

As the mist condenses, it collects as a body of liquid (49e) in the cylinder chamber (22).  The compressed air/liquid mixture is then transferred into the pressure cell (25) through outlet nozzle (11) via pipe (51). 

According to the ‘142 Patent, that is when the critical heat exchange occurs, followed by storage of the air:

In the pressure cell 25, the transferred mixture exchanges the captured heat generated by compression to a body of liquid (49f) contained in the cell.  The air bubbles up through the liquid and on to the top of the pressure cell, and then proceeds to the air storage tank 32, via pipe 33.

According to this Greentech Media piece, LightSail’s system is more efficient because it captures and stores both the mechanical energy and the thermal energy used in compressing air.  The article reports the company has received a recent funding round by some big name investors, including Bill Gates and Khosla Ventures.

Previous posts (e.g., here, here and here) discussed the continually expanding green patent war between advanced biofuels startup Gevo and a BP-DuPont joint venture called Butamax Advanced Biofuels (Butamax).

There are at least 17 patents at issue in the various actions brought by both parties.  The patents relate to methods of production of biobutanol and enzymes used in the production processes.

In the first appellate court ruling of the litigation, Butamax lost its bid to obtain a preliminary injunction against Gevo.

Butamax had requested that a Delaware district court enjoin Gevo from selling biobutanol which allegedly infringed U.S. Patent No. 7,993,889, entitled “Fermentive production of four carbon alcohols” (‘889 Patent).  The ‘889 Patent is directed to a more cost efficient method of producing isobutanol directly from pyruvate via a particular production pathway using recombinant microbial host cells.

The Delaware district court denied Butamax’s motion because Gevo’s strong non-infringement position made it unlikely that Butamax would prevail on infringement, and there was doubt as to the validity of the ‘889 Patent as some claims had been preliminarily rejected by the U.S. Patent and Trademark Office in reexamination proceedings.

Butamax appealed, and the Federal Circuit affirmed the district court’s denial of the preliminary injunction.  On appeal Butamax had to show the district court’s decision was an abuse of discretion and that the validity question raised by Gevo “lacks substantial merit.” 

The Federal Circuit found Butamax failed on both counts, though the decision focused primarily on the validity issue:

Based on the record and this standard of review, this court affirms the denial of the preliminary injunction.  Gevo, Inc. raised a substantial question of validity concerning the asserted patent, a question which Butamax has failed to show “lacks substantial merit.”

However, the appeals court did call into question a claim construction ruling of the district court which was favorable to Gevo.  More particularly, the district court had construed an enzyme recited in a ‘889 Patent claim relatively narrowly as being defined with respect to only one of two possible cofactors, i.e., as only NADPH dependent.

The Federal Circuit indicated it disagreed with this claim construction and advised the district court to reconsider at the claim construction hearing:

this court’s affirmance should not be read to endorse the trial court’s very questionable construction of the claim term “acetohydroxy acid isomeroreductase” – that is “as an enzyme that is solely NADPH dependent.”  The trial court should reconsider its construction when it holds a Markman hearing.

So the case will move forward, and Gevo may continue to sell its bio-based isobutanol while the litigation is pending.