The continual news out of India about legal rulings breaking or invalidating pharmaceutical patents has become too much for the clean tech industry to ignore. 

I’m not equating or conflating green technologies and pharmaceuticals (though some do, disingenously in my view), I’m just being realistic.  The legal and policy rationales put forth and the precedents being set in connection with pharma patents could someday soon be applied to green patents.

In March, India for the first time ordered a compulsory license, allowing an Indian company to produce and sell a generic version of Bayer’s cancer drug Nexavar without Bayer’s permission (see article ).

In a ruling this spring, India’s Supreme Court held that Swiss drugmaker Novartis could not get a patent on the beta crystalline form of imatinib mesylate, the cancer drug Gleevec.  The beta crystalline form of the drug has 30% increased bioavailability compared to the free base form, but the court was not persuaded by physical efficacy and instead focused on therapeutic efficacy.

This summer India’s Intellectual Property Appellate Board (IPAB) revoked a patent owned by GlaxoSmithKline for the breast cancer drug Tykerb.  In particular, the lapatinib ditosylate salt was found to be unpatentable for lack of innovation.  The IPAB did uphold the patent directed to the original compound.

The IPAB also revoked patents covering Allergan’s glaucoma drugs Ganfort and Combigan earlier this month. 

And that is only this year.  Significant patent revocations in India last year included Pfizer’s cancer drug Sutent, Roche’s hepatitis C drug Pegasys, and a Merck asthma treatment.

For most of these, the legal issue is that the variation of the original drug compound is deemed an unpatentable incremental innovation.  It’s true that attempts at evergreening – extending patent protection by making minor changes in a product - are common among pharmaceutical companies. 

Policy arguments also play a big role in most of these cases; advocates and supporters of the decisions contend that they are necessary to ensure affordable medicines.  This Star Tribune article quotes an Indian lawyer saying this is “not an anti-patent movement” but instead is “about access to drugs for poor people.”

But I don’t really want to weigh on in this debate.  Rather, as alluded to above, I want to point out why this movement (whether framed as “anti-patent” or pro-“access”) could render green technology patents vulnerable.

First, who’s to say the legal proscription against patenting incremental improvements in India won’t apply to green patents?  A substantial proportion of patents on green technologies are directed to incremental improvements.  

A prime example, and a close cousin to pharma, is advanced biofuels.  There are a number of patents in this area directed to recombinant organisms with genetic modifications that could be deemed “incremental” but have a major impact on biofuel production capacity.

In solar, particularly thin films, where a 1% boost in efficiency can be significant, many advances are incremental.  Would the technical improvements in wind turbines that differentiate zero voltage ride through capability from low voltage ride through be deemed unpatentable? 

On the policy side, a number of countries over a number of years have been making the argument that patents act as a barrier to transfer and deployment of green technologies in developing countries and emerging markets.  

Both the contentions – that patents make implementation of green technologies cost prohibitive – and the proposed solutions such as compulsory licensing would be very familiar to the Indian judges and other officials involved in the recent pharmaceutical patent decisions.

There is some recognition in clean tech that green technologies could be affected.  The Solar Energy Industries Association was among the numerous diverse groups that asked Vice President Joe Biden to raise concerns about trade and IP policies on his recent trip to India (see article here).

Amid some some recent signs of US-India cooperation on climate change (during Biden’s India trip), green patents should be a ripe area of discussion.  Let’s hope that pharma patent loathing won’t creep into green patents.

I’ve been covering the ongoing patent litigation between advanced biofuels company Gevo and BP-DuPont joint venture Butamax over a number of patents relating to methods of producing biobutanol.

The lawsuit started in January 2011 with Butamax’s initial complaint filed in federal court in Delaware alleging infringement of U.S. Patent No. 7,851,188 (‘188 Patent), later amended to include U.S. Patent No. 7,993,889 (‘889 Patent).  Gevo counterclaimed, accusing Butamax of infringing U.S. Patent Nos. 8,017,375 (‘375 Patent and 8,017,376 (‘376 Patent).

Earlier this year, the court handed Gevo a partial victory when it granted the company’s motion for summary judgment of no infringement of the ‘188 and ‘889 Patents under the doctrine of equivalents. 

Now Butamax has notched a win in a recent decision granting its motion for summary judgment of non-infringement of the ‘375 and ‘376 Patents. 

The patents are directed to methods of producing isobutanol using a recombinant microorganism, achieving theoretical yields of greater than about 10%.  The claims of the ‘375 Patent recite a 5-step chemical pathway, and the fourth step in the pathway is conversion of alpha-ketoisovalerate to isobutyraldehyde.

The problem for Gevo was that it had initially filed a broad claim covering the use of any enzyme to convert alpha-ketoisovalerate to isobutyraldehyde and later amended the claim to specifically recite an “alpha-ketoisovalerate decarboxylase from Lactococcus lactis.”  Butamax’s process uses a Lactococcus grayi enzyme from a different source and having a very different amino acid sequence than the Lactococcus lactis enzyme claimed by Gevo.

The court noted that, with the amendment, Gevo had argued that its L. lactis enzyme showed unexpected results to overcome a prior art rejection during prosecution of the application that matured as the ‘375 Patent.  Therefore, to prove that the Butamax process infringes the ‘375 Patent under the doctrine of equivalents, Gevo needed to demonstrate that “the L. grayi enzyme or any other enzyme also yielded the unexpected results that it relied on to overcome the prior art.”

The court held that Gevo could not prevail on infringement under the doctrine of equivalents and granted Butamax’s motion for summary judgment:

To allow Gevo to allege that the enzymes are equivalent “would vitiate [the] claim limitation” requiring an “alpha-ketoisovalerate decarboxylase from Lactococcus lactis.”….Therefore, Gevo cannot assert infringement of independent claim 1 through the application of the doctrine of equivalents for enzymes other than what it specifically claimed, i.e., an “alpha-ketoisovalerate decarboxylase from Lactococcus lactis.”….Gevo does not argue that Butamax’s use of the L. grayi enzyme literally infringes independent claim 1 of the ‘375 patent.  For the foregoing reasons, the court grants Butamax’s motion for summary judgment of non-infringement of the asserted claims 1-3 and 5-7 of the ‘375 patent.

The claim element at issue in the ‘376 Patent was the recombinant overexpression of the gene coding the Aft protein, causing an increase of Aft protein in the cell.  The function of the claim is to increase the enzymatic activity of the enzyme DHAD.  This is achieved through recombinant yeast cells engineered to provide increased expression of Aft1 and/or Aft2.

However, in Butamax’s strain, there is a deletion of an FRA2 gene, which does not directly produce excess Aft protein, but instead removes the negative regulator, allowing native Aft protein to be used in a greater amount.  Gevo argued that deleting the FRA2 gene is equivalent to overexpressing the Aft gene.

The court disagreed because the claim language of the ‘376 Patent requires overexpression of the Aft protein:

In the case at bar, to find that Butamax’s strains are the equivalent of Gevo’s strains would render the limitation of overexpressing Aft superfluous and would essentially negate the manner in which the limitation achieves transcription of the genes in the iron regulation.

The court further held there could be no infringement under the doctrine of equivalents because of the different functions and operations of the FRA2 deletion and the Aft overexpression:

The deletion of FRA2 does not perform the same function in substantially the same way as the overexpression of Aft1, as it does not increase the Aft protein levels as called for by the claim, in order to then increase the enzymatic activity of DHAD.  Instead the deletion of FRA allows native Aft1 protein to be used in the iron regulation.  As the claim language (and indeed the parties’ agreed upon construction) requires the increase of Aft1 via overexpression, the court concludes that the doctrine of equivalents does not apply.

So Butamax went two for two on non-infringement, succeeding on summary judgment for both the ‘375 and ‘376 Patents.

Butamax also achieved a partial victory on invalidity, as the court granted its motion for summary judgment that the ‘375 Patent is invalid for lack of enablement and written description.  The patent claims high yields of glucose of greater than 50% up to greater than 97.5% while the examples in the written description show a highest obtained yield of only 12.8%.

Thus, the court held the ‘375 Patent invalid for lack of written description support for the claims:

As to written description, the court concludes that Butamax has shown, by clear and convincing evidence, that persons skilled in the art would not recognize a description of the higher yields of the claimed invention.

And on enablement:

The court concludes that Gevo has only offered conclusory allegations to support yields above the reported 12.8% and, therefore, has not offered any evidence to show that the full scope of claim 1 was enabled.  There is no expert testimony that would allow a reasonable jury to conclude that the higher yields would be achievable at all, or at least without undue experimentation.

On validity of the ‘376 Patent, the only success for Gevo in this decision, the court found the parties raised genuine issues of fact as to whether the patent has adequate written description and the claims are enabled and therefore denied Butamax’s summary judgment motion. 

Previous posts, e.g., here and here, discussed the patent infringement litigation between Danish biopharm rivals Novozymes and Danisco (now owned by DuPont), which are both active in developing enzymes used in the production of biofuels.

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

The ’723 Patent, which claims priority back to an application filed in 2000, is entitled “Alpha amylase mutants with altered properties” and relates to variants of certain alpha amylases that exhibit altered stability under high temperatures, low pH and other conditions.  The patented variants can be used for starch conversion in ethanol production. 

The case has seen some legal twists and turns.  In February 2011, the’ 723 Patent survived a close shave on Danisco’s summary judgment motion of invalidity based on a written description argument.  Then, in November 2011, the jury found that Danisco infringed the ‘723 Patent and awarded Novozymes over $18 million in damages.

There was a dramatic turnaround when Danisco’s post-trial motion succeeded in persuading the trial court judge that the jury verdict should be vacated and the patent declared invalid for failure to satisfy the written description requirement.

A U.S. patent must have an adequate written description to be valid.  This means the patent’s specification (which includes the written description and figures) must convey to a person skilled in the relevant technical field that the inventor actually invented and “had possession” of the claimed invention.

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

Novozymes appealed this final decision, and recently the U.S. Court of Appeals for the Federal Circuit affirmed that the ‘723 Patent is invalid, in all likelihood ending the case.

The Federal Circuit found that the written description of the original ‘723 Patent does provide “formal textual support” for the claimed enzymes, but it fails to describe the “actual functioning, thermostable alpha-amylase variants” recited in the claims.  There were too many possibilities, the court said, and no instruction on how to narrow them:

[O]ne searces the 2000 application in vain for the disclosure of even a single species that falls within the claims or for any “blaze marks” that would lead an ordinarily skilled investigator toward such a species among a slew of competing possibilities.

While the 2000 application does specifically describe a substitution at position 239 (S239W), that particular substitution does not confer increased thermostability in alpha-amylase enzymes as claimed in the ‘723 Patent, and there is no indication that “Novozymes had invented any thermostable alpha-amylase variants substituted at amino acid position 239 by the time of filing.”

To do so, the court stated, Novozymes would have had to actually make and test individual variants or at least identify subclasses of variants that would be expected to possess the claimed properties.  The 2000 application does not go nearly far enough in this regard:

At best, the 2000 application describes a roadmap for producing candidate alpha-amylase variants and then determining which might exhibit enhanced thermostability.

Accordingly, the Federal Circuit affirmed the district court’s judgment of invalidity for insufficient written description:

We hold that no reasonable jury could find that the claims of the ‘723 patent meet the written description requirement…and that the district court therefore correctly entered judgment as a matter of law invalidating those claims.  In contrast to the claims – which narrowly recite specific alpha-amylase variants that result from mutating a particular parent enzyme at a single amino acid position to yield distinctive functional properties – the supporting disclosure of the 2000 application provides only generalized guidance listing several variables that might, in some combination lead to a useful result.  Taking the claims as a whole rather than as the sum of their individual limitations, nothing in the 2000 application indicates that Novozymes then possessed what it now claims.

This case highlights a common patent prosecution practice used by technology firms to compete with their close rivals, that is, keeping an old patent application alive to preserve the early priority date and drafting claims to ensnare a competitor’s new product.

As mentioned above, the ‘723 Patent traces priority back to an application filed in 2000.  It was only upon learning that DuPont had introduced a thermostable BSG alpha-amylase variant substituted at position 239 that Novozymes filed a new continuation application in December 2009 with claims directed to variants substituted at position 239.

There would be nothing wrong with that if the newly claimed subject matter had been fully disclosed in the original 2000 application.  However, the courts found that was not the case here.  In its decision on post-trial motions, the trial court noted that a patentee cannot later flesh out the invention:

The concern is that a patentee may attempt to use later filed claims, relying on more recently discovered data, to expand the scope of his invention or to complete an idea.

Softbank, a Japanese telecommunications and internet company, recently formed a joint venture with U.S. fuel cell maker Bloom Energy to sell electricity from Bloom’s natural gas fuel cells in Japan.

A theme of this Greentech Media article about the JV is that Japan is “energy-poor” after the almost complete shutdown of its nuclear energy program.  SoftBank believes Bloom’s fuel cells are a perfect fit for the country.

The article quotes the companies’ press release, which notes “a significant electrical power deficit in Japan” and a recent increase in energy imports to Japan.  The article also observes that the country’s solar industry is trying to fill the gap.

All of this got me thinking about patenting green technologies in Japan. 

Initially, I was curious whether Bloom owns any Japanese patents for its fuel cell technology.  The Greentech Media article says the JV with SoftBank is Bloom’s “first foray” into international markets.

Indeed, a search of a couple of international patent databases does not turn up any Japanese patents or published applications in the name of Bloom Energy.  Bloom does own a number of international, or PCT, patent applications, which, depending on their priority dates, may still be eligible for filing in Japan.

But filing a patent application in Japan is expensive.  Unlike the U.S. Patent and Trademark Office (USPTO), the Japan Patent Office (JPO) does not allow any free claims; it charges for each claim.  In addition, translation costs can be very high for technical documents such as patent applications. 

Factor in the cost of retaining a Japanese law firm for prosecuting the application, translating and responding to office actions, etc., and the total cost of obtaining a Japanese patent can set you back $15-20K or more.

JPO does have a green technology fast track program should you wish to expedite examination of your patent application.  However, the program is fairly burdensome.

To be admitted to the program the applicant must (1) submit a brief description of the invention explaining that the claimed invention reduces energy consumption or carbon dioxide emissions, and (2) conduct a prior art search, disclose the prior art, and submit an explanation comparing the invention to the prior art.

The search and explanation requirement shifts what would typically be the JPO patent examiner’s burden to the applicant.  Thus, the applicant has to pay its patent attorney to do substantial additional work, increasing the cost of the patent application.

Moreover, the comparative prior art explanation submission is analogous to the Examination Support Document (ESD) required for the USPTO’s Petition to Make Special for ordinary expedited examination.

In addition to the added expense, the ESD has been dubbed the “Express Suicide Document” because of the heightened risk of inequitable conduct applicants face based on the representations made in the ESD.  The comparative prior art explanation submission for the JPO green patent fast track program could expose the applicant to similar risks.

While Bloom is getting in, it and other green tech patent applicants face a costly and perhaps difficult process to obtain patents in Japan.

Velocys, part of the Oxford Catalysts Group, is an Ohio company that develops technology for the production of synthetic oil from waste gas, coal, and waste biomass. 

Velocys owns at least 84 U.S. patents and published patent applications, including a family of patents that issued from an application originally filed in 2003.  These patents include U.S. Patent Nos. 7,402,719, 7,744,829 and 8,106,249.

The patents are entitled “Catalytic oxidative dehydrogenation, and microchannel reactors for catalytic oxidative dehydrogenation” (Dehydrogenation Patents) and cover what appears to be the company’s first generation microchannel reactor technology.

Microchannel reactors contain thousands of millimeter scale channels that quickly dissipate heat from the chemical reactions so more active catalysts can be used.  Fischer-Tropsch (FT) reactors use effect heat dissipation by interleaving channels containing catalyst with water-filled coolant channels. 

According to the Velocys web site:

The use of microchannel processing makes it possible to greatly intensify chemical reactions enabling them to occur at rates 10 to 1000 times faster than in conventional systems.

The Dehydrogenation Patents are directed to apparatus and methods of oxidatively dehydrogenating a gaseous hydrocarbon in which the reaction chamber has walls (6, 6′), a process channel (2) contains a bulk flow path (4), and a heating chamber (10) is adjacent to the process channel (2).

The heating chamber is divided into several regions (7, 9, 13) into which various fluids flow to tailor the temperature profile in a process channel.  In one example, the Dehydrogenation Patents state:

[S]team or the return portion of [an oxidative dehydrogenation] stream could flow through region 7 to provide a preheat zone; an endothermic process stream can flow through region 9 to remove heat from the oxidative dehydrogenation reaction in a reaction chamber (a portion of the process channel in which catalyst 15 is present), and a cold fluid flows through region 13 to quench the reaction.

As shown in FIG. 3A of the Oxidative Dehydrogenation Patents, the channels may have apertures (38) forming passageways between channels (36 and 37) to allow flow of a reactant into the endothermic reaction chamber.

Velocys also has more recent patent applications relating to subsequent developments in its microchannel technology, including U.S. Application Publication Nos. 2012/0095268 and 2013/0127093, which includes the claimed step of ultrasonically packing particulates into the microchannels using an ultrasonic densification unit.

The Velocys FT reactor technology was recently selected for a biomass-to-liquids plant to be developed by Red Rock Biofuels and partially funded by a grant from the U.S. Department of Defense.

A recent article by three professors of business, energy and economics looks at the role of patents on hydraulic fracturing, or fracking, the process of injecting pressurized water and chemicals into subterranean formations to extract natural gas.

Entitled “Fracking Patents: The Emergence of Patents as Information-Containment Tools in Shale Drillling,” the piece posits that the information-control mechanism of patents will hamper efforts to test the environmental effects of patented fracking technologies.

More particularly, the authors note that there are serious environmental hazards associated with fracking due to the toxic chemicals used in the processes, and assessing the extent of the harm requires field testing of the processes.  However, such field tests would constitute infringement if the techniques or materials used have been patented:

A third party interested in investigating the impact of fracturing fluids on the environment or evaluating issues beyond discrete chemical composition…will need to make use of the patented materials.  Without a license, it is unlikely that any exception in patent law would excuse such activity from infringement. 

Fracking patents, therefore, can act as information-containment mechanisms where the patent owners enforce their rights to shut down the testing activities:

A patentee can assert its rights to control testing and experimentation, and thereby shape the information environment.

The article was written by Daniel R. Cahoy, Professor of Business Law and Dean’s Faculty Fellow in Business Law at Penn State, Joel Gehman, Assistant Professor of Strategic Management & Organization and H.E. Pearson Faculty Fellow at the University of Alberta, and Zhen Lei, Assistant Professor of Energy and Environmental Economics at Penn State.

I corresponded with Professor Cahoy via email, and he provided the following summary of his work on fracking patents:

Based on a general interest in hydraulic fracturing technology and intellectual property rights, my colleagues (Joel Gehman, Assistant Professor of Strategic Management and Organization, Alberta School of Business, and Zhen Lei, Assistant Professor of Energy and Environmental Economics, Penn State) and I wanted to investigate whether patents could have an impact on the natural gas boom.  We first determined that there are indeed many patents that cover fracking technology and the numbers appear to be growing dramatically. That has obvious implications for future market development, pricing, etc.  But we were also curious as to whether patents could impact our understanding of the most controversial question related to fracking: the potential for environmental harm. 

Our first paper is a discussion of the critical information issues in hydraulic fracturing and the manner in which patents can prevent the kind of experimentation necessary to develop that information.  We consider the lingering impact of Madey v. Duke on experimental use and build on the general work others who have considered patents as information limitation tools, such as Professor Brenda Simon at TJLS. We conclude that there are options for overcoming patent information-barriers, most creatively through the use of a public university’s inherent sovereign immunity rights.  This paper was published in 2013 in the Michigan Telecommunications and Technology Law Review and is available for free download at http://ssrn.com/abstract=2065032.

Our future work involves building an accurate, comprehensive database of patents related to hydraulic fracturing for in-depth analysis of trends, ownership consolidation and even the possible influence of patent trolls.  The challenge is the fact that hydraulic fracturing is actually a bundle of technologies and practices (fluids, proppants, service equipment, etc.).  We are working with experts in energy exploration and computer science to help us separate the wheat from the chaff.  We expect to have our initial collection ready for initial analysis in the fall.

The second part of this green patent complaint update covers the period mid-June through most of July, during which several new complaints were filed in the areas of biofuels, components for hybrid and electric vehicles, LEDs, energy efficiency, solar air conditioners, water technology, and waste treatment.

Biofuels

GS Cleantech Corp. v. Western New York Energy, LLC

GS Cleantech recently filed another lawsuit, this one against Western New York Energy in the U.S. District Court for the Western District of New York on July 12, 2013. 

The asserted patents are U.S. Patent Nos. 7,601,858, 8,008,516, and 8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” and U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.”  The patents relate to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

According to the complaint, Western New York uses infringing processes performed by ethanol production plants purchased from a plant designer called ICM.  ICM was involved in prior litigation with GS.

GS has been on an aggressive patent enforcement campaign over the last several years.  The multiple cases were consolidated in the Southern District of Indiana, where the asserted patents were construed and re-construed.

Hybrid and Electric Vehicles

Northern Cable and Automation, LLC v. General Motors Co.

This is a dispute over ownership and inventorship of U.S. Patent No. 7,976,333, entitled “Laminar electrical connector” (‘333 Patent) and directed to an electrical connector specifically designed for use in hybrid and electric vehicles.

According to the complaint, filed in the Eastern District of Michigan on July 11, 2013, GM claims that one of its employees should be named as a co-inventor on the ‘333 Patent and that Northern Cable, d/b/a, Flex Cable is obligated to assign certain rights in the patent to GM.

Flex Cable alleges that the inventor, Erwin Kroulik, conceived of the invention of the ‘333 Patent before the date of an agreement with GM, and therefore Flex Cable is not obligated to assign any rights in the ‘333 Patent to GM. 

 

LEDs

Trustees of Boston University v. Apple, Inc.

On July 2, 2013 BU filed another lawsuit in federal court in Boston, continuing its patent enforcement campaign against various LED makers and electronics manufacturers.  The complaint again asserts U.S. Patent No. 5,686,738 (’738 Patent). 

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 are the iPhone 5, iPad, and MacBook Air that include allegedly infringing LED devices.

Energy Efficiency

Efficiency Systems, LLC v. Cisco Systems, Inc.

Efficiency Systems, LLC v. Dell Inc.

Efficiency Systems, LLC v. IBM Corp.

Efficiency Systems, LLC v. Oracle Corp. et al.

On June 28 and 29, 2013, Efficiency Systems fired off four patent infringement suits in federal court in Delaware against Cisco (Cisco complaint), Dell (Dell complaint), IBM (IBM complaint), and Oracle (Oracle complaint).

Each complaint asserts U.S. Patent No. 6,986,069, entitled “Methods and apparatus for static and dynamic power management of computer systems” (‘069 Patent).  The ‘069 Patent is directed to a power authority system for manipulating the aggregate power consumption levels of multiple computer systems by managing the power consumption levels of the computer systems.

The accused systems include various server systems, computer systems and components containing power management features.

 

Solar Air Conditioners

Sedna Aire USA Inc. v. Eco Solar Technologies, Inc.

Sedna Aire recently sued Eco Solar for alleged infringement of U.S. Patent No. 8,448,458, alleged cybersquatting, and alleged passing off in connection with use of the mark SOLAR COOL (and Design).

The ‘458 Patent is entitled “Solar collector and solar air conditioning system having the same” and directed to a solar air conditioning system including a solar collector.  The system superheats working fluid using radiant energy from the sun and delivers the working fluid as a superheated and higher-pressure gas to a condenser within the solar air conditioning system.

Filed June 24, 2013 in U.S. District Court for the Southern District of Florida, the complaint alleges that Eco Solar is selling a solar air conditioner based on Sedna’s patented design and engaging in unauthorized use of the SOLAR COOL trademark.

 

Water Purification

Aquatech International Corp. v. Veolia Water West Operating Services, Inc. et al.

On June 27, 2013, Aquatech filed a complaint against Veolia in the Western District of Pennsylvania, alleging infringement of two patents relating to water purification technology.

The asserted patents are U.S. Patent Nos. 5,925,255 and 6,537,456, each entitled “Method and apparatus for high efficiency reverse osmosis operation.”  The patents relate to Aquatech’s HERO water purification process, a high efficiency reverse osmosis water purification process which is used in many industries including power generation, petrochemical, and microelectronics. 

The accused process is Veolia’s OPUS technology, which the complaint alleges Veolia is using in various locations including a Chevron oil production field in San Ardo, California and the Arroyo Grande Oilfield in San Luis Obispo County, California.

Waste Treatment

Trunzo v. Grobstein

In this suit filed June 25, 2013 in federal court in Los Angeles, Michael Trunzo sued the trustee for the bankruptcy estate of debtor International Environmental Solutions Corporation (IES) and purchasers of IES’s assets for alleged infringement of U.S. Patent No. 5,868,085 (‘085 Patent).

Entitled “Pyrolytic waste treatment system,” the ‘085 Patent is directed to a system for pyrolysis of hydrocarbon constituents of waste material including a heating chamber in communication with the atmosphere via a first valve and in communication with a pyrolysis chamber via a second internal valve.

The complaint alleges that the defendants have infringed the ‘085 Patent by reverse engineering a waste-to-energy unit, and the defendants have issued a distributorship/developers license to defendant Wayne Herling for the purpose of marketing, distributing and selling the the allegedly infringing units.

I will catch up on the new green patent lawsuits filed in the last few months with a two-part green patent complaint update.  The first part covers May through mid-June, which saw several new green patent complaints in the areas of biofuels, fuel recycling, smart grid, and LEDs, and other energy efficient lighting.

Biofuels

GS Cleantech Corp. v. Guardian Energy, LLC

GS Cleantech recently filed suit against Guardian Energy in federal court in Minnesota, alleging infringement of four patents relating to ethanol production. 

The asserted patents are U.S. Patent Nos. 7,601,858, 8,008,516, and 8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems” and U.S. Patent No. 8,008,517, entitled “Method of recovering oil from thin stillage.”  The patents relate to methods of recovering oil from byproducts of ethanol production using the process of dry milling, which creates a waste stream comprised of byproducts called whole stillage.

According to the complaint filed June 7, 2013, Guardian uses infringing processes performed by ethanol production plants purchased from a plant designer called ICM.  ICM was involved in prior litigation with GS.

GS has been on an aggressive patent enforcement campaign over the last several years.  The multiple cases were consolidated in the Southern District of Indiana, where the asserted patents were construed and re-construed.

 

 Fuel Recycling

Yellow Dog Technologies, LLC v. Fuel Recyclers Arizona LLC

On May 15, 2013, Yellow Dog filed a patent infringement suit against Fuel Recylers, alleging infringement of U.S. Patent No. 8,165,781 (‘781 Patent).

The complaint, filed in U.S. District Court for the District of Arizona, alleges that the fuel pump controllers used by Fuel Recyclers to provide automotive defueling services infringe claims 1 and 16 of the ‘781 Patent.

The ’781 Patent is entitled “Fuel recovery” and directed to fuel pump controllers and software for operation of a fuel pump of a combustion engine so it pumps a predefined amount of fuel in the fuel line directly to a drain conduit.

 

LEDs

Formosa Epitaxy Inc. v. Lexington Luminance LLC

On May 3, 2013 Formosa Epitaxy sued Lexington Luminance in the U.S. District Court for the District of Massachusetts for a declaratory judgment that Formosa does not infringe Lexington’s U.S. Patent No. 6,936,851 (‘851 Patent) and that the ‘851 Patent is invalid.

The complaint refers to Lexington’s prior patent infringement suit against Google in which it is asserting that certain Google products containing LED chips and wafers manaufactured by Formosa infringe the ‘851 Patent.

The ‘851 Patent is entitled “Semiconductor light-emitting device and method for manufacturing the same” and is directed to LEDs having textured districts on the substrate such that inclined layers guide extended defects to designated gettering centers in the trench region where the defects combine with each other.  This structure reduces the defect density of the LEDs.

 

Trustees of Boston University v. Arrow Electronics, Inc. et al.

BU continued its patent enforcement campaign against various LED makers and electronics manufacturers with another lawsuit filed in federal court in Boston on May 3, 2013.  The complaint again asserts U.S. Patent No. 5,686,738 (’738 Patent). 

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 are electronics that include certain Samsung LED devices.

 

Star Co. LED Technologies, LLC v. Sharp Corp. et al.

Star Co. LED sued Sharp, Sony, and Modia Home Theatre Store for alleged infringement of U.S. Patent No. 6,964,489, entitled “Device for producting an image” (‘489 Patent).

Filed May 17, 2013 in federal court in Marshall, Texas, the complaint alleges that certain LED televisions manufactured, imported and sold by the defendants use LED and LCD technologies that infringe the ‘489 Patent.

The ‘489 Patent is directed to an LED device for background lighting in which an optical device for focusing and scattering light is arranged between the light source and the image reproduction apparatus.   A matrix point is formed by a number of LEDs, with four LEDs forming one matrix point and two green LEDs and two red LEDs provided for each matrix point.

 

Plastic Inventions and Patents, Inc. v. JS LED Technology Corp.

On June 19, 2013 Plastic Inventions and Patents (PIP) sued JS LED in the District Court for the Eastern District of Louisiana, alleging infringement of U.S. Patent No. 7,114,830 (‘830 Patent).

The ‘830 Patent is entitled “LED Replacement for fluorescent lighting” and directed to a tubular LED lighting unit with a reflective coating.

According to the complaint, JS LED’s web site offers for sale LED replacements for fluorescent tube lighting, including the model JE-T8-4C15, that infringe the ‘830 Patent.

 

Energy Efficient Lighting

Richmond v. Walgreen Co.

Simon Nicholas Richmond filed suit against Walgreens for alleged infringement of three U.S. patents relating to a solar power lighting assembly.

The asserted lighting assembly patents are all part of the same family and consist of U.S. Patent Nos. 7,196,477, 7,429,827 and 8,362,700, each entitled “Solar powered light assembly to produce light of varying colors.” 

Filed May 6, 2013 in the U.S. District Court for the District of New Jersey, the complaint alleges that Walgreens is infringing the asserted patents by selling the Living Solutions brand Solar Fiber Optic Garden Snake solar-powered garden light.

 

Walton v. Solar Energy USA, Inc.

On June 12, 2013, Randal Walton filed a patent infringement suit against Solar Energy USA in the U.S. District Court for the Northern District of California.

The asserted patents are all part of the same family and consist of U.S. Patent Nos. 7,178,944, 7,390,106 and 7,748,871, each entitled “Lighting apparatus” and directed to enhanced illumination lamps utilizing low wattage fluorescent tubes having reflective surfaces for focusing otherwise lost light toward a target illumination area.

According to the complaint, Solar Energy’s T-5 lighting fixture adaptors infringe the lighting apparatus patents.

 

Smart Grid

 Allure Energy, Inc. v. Nest Labs, Inc. et al.

Allure Energy, a Texas company that provides home environment and energy management products, sued Nest Labs for alleged infringement of U.S. Patent No. 8,442,695 (‘695 Patent).

Filed May 14, 2013 in federal court in Lufkin, Texas, the complaint alleges that Nest’s Learning Thermostat infringes the ‘695 Patent.

The ‘695 Patent is entitled “Auto-adaptable energy management apparatus” and directed to a smart thermostat device.

Nest has been involved in a high profile patent suit with Honeywell in which it scored some major initial victories in reexaminations of Honeywell’s patents.

Previous posts (e.g., here, here and here) discussed the biobutanol patent war between advanced biofuels company Gevo and BP-DuPont joint venture Butamax.  Some of the suits filed by Gevo named DuPont and BP as defendants in addition to Butamax. 

One such Gevo complaint, filed July 30, 2013, asserts U.S. Patent No. 8,232,089, entitled “Cytosolic isobutanol pathway localization for the production of isobutanol” and alleges that BP “directs” Butamax to engage in infringing actions such as R&D activities. 

BP moved to dismiss the case against it, and the issue was whether BP as a parent of Butamax directs or controls Butamax’s allegedly infringing activities.  The court held it does not.

In a recent opinion the court found the pleadings in Gevo’s complaint deficient on this issue:

In its complaint, Gevo has asserted no underlying facts supporting its conclusory allegation of control; therefore, the court is not obligated to accept as true the proposition that BP controls the activities of its subsidiary defendants or the activities of any business venture owned by the subsidiaries.

Without adequate pleadings, the court was left with the conclusion that Butamax was the proper defendant, the entity engaged in the allegedly infringing activity:

Given the context of this litigation, where it is evident that Butamax is the business entity engaged in the “research and development activities related to the subject matter of this action”, Gevo’s allegations do not  sufficiently tie BP to the alleged act of infringement, that is, disclosing recombinant yeast strains that embody the patented invention.  To put it another way, Gevo has not sufficiently pled any act of infringement that plausibly could be related to BP.