Berkeley-based IP Checkups recently published its 2013_Annual_Report on cleantech patenting trends.  Based on the firm’s proprietary green patent database -  Cleantech PatentEdge™ – the report contains much interesting analysis driven by this powerful data analytics tool.

The major finding of the report is that, after several years of growth, worldwide published cleantech patent filings declined in 2013.  This is measured by the number of cleantech patent documents published, which typically means a lag time of 18 months from application filing date for published patent applications, and may reflect the decrease in cleantech venture capital funding in 2013.

More particularly, the number of worldwide patent documents published in 2013 decreased by 6% from 2012.

Against this global backdrop, the share of U.S. patent grants grew over the last several years from 16% of the worldwide total in 2009 to 22% last year.  Interestingly, the share of U.S. published patent applications has remained fairly steady over this period, comprising about 1/3 of worldwide cleantech patent publications.

The report also looks at green patent documents by industry sector and found that Renewable Energy Generation is the leading sector with 23% of the patent documents.  This lead is attributable to growth in solar and biofuels patents, according to the report.

Other sectors that have seen growth in the past several years are Transportation, Green Materials, Energy Storage, and Efficiency.

You can read the complete report here.

A recently issued patent could make the use of master limited partnerships (MLPs) more difficult in wind projects without a license or reliance on the patent owner to provide software / services to enable transactions.

Entitled “Apparatus and method for combining easements under a master limited partnership,” U.S. Patent No. 8,700,517 (‘517 Patent) describes a master limited partnership as follows:

A master limited partnership (MLP) is a business organization governed by a contract between management (e.g., general partners) and investors (e.g., limited partners). A master limited partnership combines the tax benefits of a limited partnership with the liquidity of publicly traded securities. The master limited partnership was originally conceived as an organizational structure to capitalize on mature, low growth, cash generating businesses. Accordingly, master limited partnerships have been used in such industries as oil, gas, real estate, and natural resources.

Presently, this type of investment vehicle is being deliberated by the U.S. Congress as a mechanism to help facilitate the deployment of renewables.  The implication would be that a broader base of potential investors that do not require accreditation could become partners / investors in wind farms or solar parks.

We have seen recent trends towards crowd-funding of wind parks in Europe, and some developers here in the U.S. believe MLPs could be a useful tool.

The ‘517 Patent describes a business method for using a computer system to store data and information related to property easements secured under the MLP structure:

A computer includes a processor and a memory connected to the processor. The memory stores capital data characterizing capital raised for the purchase of real property easements, operating data characterizing fees collected in connection with the real property easements, and a master limited partnership module with executable instructions executed by the processor to designate master limited partnership income based upon the capital data, the operating data and terms of an easement ma[s]ter limited partnership.

An easement is a property right under common law, and is often sought by a renewable project developer from a landowner so that valuable consideration is provided to the landowner for the use of the property for renewable project construction.

An examination of the breadth of claim 1 of the ‘517 Patent shows that the inventors propose a computer system and a means for cataloging and storing information related to easements of specific projects with an MLP structure:

1.  A computer, comprising: a processor; and a memory connected to the processor, the memory storing capital data characterizing capital raised for the purchase of real property easements, operating data characterizing fees collected in connection with the real property easements, wherein the fees are from aggregated real property easement rights and associated rental fees from rent generating fixtures, and a master limited partnership module with executable instructions executed by the processor to designate master limited partnership income based upon the capital data, the operating data and terms of an easement ma[s]ter limited partnership.

The implications of this claim breadth would be to make the assignee of the ‘517 Patent, American Infrastructure Funds, LLC, the owner of a de-facto standard for many MLP deal structures, even outside of renewables.

The ‘517 Patent might be treated similarly to a “standards essential” patent, and compulsory licensing may be required since it would appear that many investment management companies and project developers would utilize computer systems and software which comprise this method.

Interestingly, while many companies may propose to argue against the obviousness of something so broad, the method described would have likely been treated by investment companies and project developers in the past as a company trade secret.  Thus, there may be little public domain disclosure of relevant prior art to this method, and their original priority claim from the patent family dates back over 12 years.

It will be interesting to see how enforcement of the ‘517 Patent unfolds as renewable projects attempt to get on the MLP bandwagon.

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

A previous post discussed the dismissal of Danisco‘s declaratory judgment action against its rival Novozymes.  As described by the San Francisco district court decision, the Danish companies are “reputedly the two major competitors in the field of developing and supplying industrial enzymes used in the process of converting corn into ethanol fuel.”

Danisco’s lawsuit sought a judgment that the company’s Rapid Starch Liquefaction (RSL) alpha-amylase products did not infringe Novozymes’s U.S. Patent No. 8,252,573 (’573 Patent) and that the ’573 Patent is invalid.

The ’573 Patent  is entitled “Alpha-amylase variant with altered properties” and is directed to an isolated variant polypeptide having alpha amylase activity and containing a proline substitution at position 188 (to yield a variant called “E188P”).

In the alternative, Danisco asked the court for a determination that its own U.S. Patent No. 8,084,240 (’240 Patent) has priority over the ’573 Patent.  The ’240 Patent is entitled “Geobacillus stearothermophilus alpha-amylase (AMYS) variants with improved properties” and directed to an isolated variant of a truncated Geobacillus stearothermophilus enzyme also containing the proline substitution at position 188.

Novozymes had added the position 188 proline substitution to a claim late in prosecution of the application that issued as the ‘573 Patent after learning that Danisco’s ’240 Patent would be granted with such a claim.

Although the district court conceded that the circumstances might reasonably suggest that Novozymes wanted to enforce the ’573 Patent against Danisco at some point, it held that events occurring prior to patent grant alone cannot support declaratory judgment jurisdiction.

Danisco appealed the district court decision dismissing the case, and the Court of Appeals for the Federal Circuit recently reversed the lower court, holding there was an actual controversy and that the DJ action could be sustained.

The appeals court made clear that the distinction between a patentee’s activities before and after a patent issues is not significant to a DJ analysis that is supposed to be flexible:

The district court’s categorical distinction between pre- and post-issuance conduct is . . . irreconcilable with the Supreme Court’s insistence on applying a flexible totality of circumstances test, its rejection of technical bright line rules, and our own precedent.  Contrary to the district court’s stated view, we have never held that “pre-issuance conduct” cannot constitute an affirmative act . . .

The Federal Circuit found “the record demonstrates that a definite and concrete patent dispute exists” between the parties, based on Novozymes’s actions and statements about the Danisco enzyme product before and after its ‘573 Patent issued:

Novozymes has insisted on multiple occasions that its ‘573 patent claim reads on the BSG alpha-amylase with an E188P mutation, which is the active compound in Danisco’s RSL products and is claimed in Novozymes’s patent.  The record shows that Novozymes sought its patent because it believed that Danisco’s products would infringe once the claim issued.

Significantly, the court of appeals observed that the parties have clearly staked out opposing legal positions on the patent rights at issue:

Novozymes twice asserted that Danisco’s ‘240 patent was invalid and that Novozymes, not Danisco, is entitled to a patent on the claimed BSG E188P alpha-amylase invention.  Danisco has taken a legal position that is entirely opposed to the position taken by Novozymes, viz., that Danisco successfully prosecuted and obtained the ‘240 patent, that it is the rightful owner of the claimed invention, and that its RSL products do not infringe the claim of Novozymes’s ‘573 patent.

In light of all the circumstances, including previous litigation and Novozymes’ conduct prior to issuance of the ‘573 Patent, the Federal Circuit held that there is declaratory judgment jurisdiction here:

Novozymes has twice sued Danisco or its predecessors in interest for patent infringement regarding related liquefaction products.  The parties have plainly been at war over patents involving genetically modified alpha-amylase enzymes and are likely to be for the foreseeable future.  They thus have adverse legal interests over a dispute of sufficient reality that is capable of conclusive resolution through a declaratory judgment.

If you’re in or around San Diego this week be sure to check out the Clean Tech Open Business Briefing this Thursday, April 10th.

The Cleantech Open is a non-profit organization that runs the world’s largest cleantech accelerator.  The Business Accelerator fosters promising startups in cleantech fields through a six-month program that includes cutting-edge entrepreneur training and mentoring (including in IP!), client and partner opportunities, and funding connections.

The business briefings bring together Clean Tech Open members and staff and early-stage clean tech start-ups and entrepreneurs.  Attendees will get an overview of the Cleantech Open and the Business Accelerator.

I will be speaking on some broad themes about the role of patents in the clean tech industry.  Entitled “Green Patents and Green Branding:  Global Perspectives and News You Can Use,” my talk will cover a range of big picture stuff and practical info on green patenting and protecting eco-marks.

The event will be held at the World Resources SimCenter in downtown San Diego from 6:00-8:00 PM.  You can find more information about the event and register here.

GLA McKenzie Long & Hugeo announced today the opening of an Antarctica office.  The new office is the firm’s 683rd location, following yesterday’s opening of an outpost in the Kufra basin and oasis group in the Sahara desert.  GLA is the first law firm to open an office in Antarctica.

Located in the prestigious Coats Land region of East Antarctica, the office will provide the firm’s clients and staff with easy access to the Shackleton Range, the Filchner Ice Shelf, and of course, the South Pole.

The office will be headed by Winchell Cooke, a partner in the firm’s Environmental Law practice group who will relocate from Nuuk, Greenland.   Cooke, who billed 198 hours in 2013 and has $207,412.51 in A/R from the last two years, could not be reached for comment.

“We are extremely pleased to be the first international law firm to open an office in Antarctica,” said GLA Managing Partner Thaddeus “Chip” Buckley.  “Our Antarctica practice has grown substantially over the past few weeks, particularly in the areas of environmental law, climate change, maritime law, and dogsled expedition law, and having GLA lawyers in Coats Land will allow us to more efficiently and effectively serve both our locally based clients and our international clients doing business in Antarctica.”

“Our firm offers its clients unparalleled global reach,” he added.

GLA has had a vibrant polar practice for more than two weeks.  With at least three lawyers who do cross-country skiing (including one associate also adept at snow-shoeing), the firm offers a talented and deep team of ice-ready attorneys.

“Unparalleled Global Reach”

This is likely to be just the first step for GLA in Antarctica, the fifth-largest continent in area after Asia, Africa, North America, and South America.  Buckley said the firm is looking to add another office in West Antarctica very soon, and is scouting locations in Palmer Land along the Antarctic Peninsula.

Don’t rule out the North Pole either, Buckley said.  The combination would fit well with the firm’s culture because many GLA lawyers exhibit behavior that is “clinically bipolar.”

GLA Managing Partner Chip Buckley and members of the firm’s Strategic Growth Committee visit potential office space in East Antarctica.

GLA is the world’s largest law firm, with over 80,000 lawyers worldwide, and has gone on an explosive growth spree in the last few years, acquiring more than 450 smaller firms.

We caught up with Buckley as he concluded a conference call with GLA’s 692 practice group chairs.  He told Green Patent Blog that the recent expansion by GLA highlights a major advantage of the firm:  its “unparalleled global reach.”  According to Buckley, that has been very attractive to clients as GLA has been able to maintain and add thousands of clients during its recent period of rampant acquisitions.

“A Dizzying Array of Options for Getting Around Conflicts”

While mergers and acquisitions often create conflict problems that lead to lost clients and missed engagement opportunities for global law firms, Buckley said GLA has been able to avoid those issues.  The solution for GLA has been to organize the firm under an innovative Bulgarian corporate structure called a Melaeighn (pronounced “malign”).  With 19 offices in Bulgaria, GLA has the legal right to operate as a domestic Melaeighn.

Advantageously for GLA, a Melaeighn allows all of the firm’s offices to be governed by Bulgarian legal ethics rules.  While those rules allow lawyers substantial flexibility in resolving conflicts between and among client matters handled by different offices, the key advantage, according to Buckley, is that the Bulgarian legal ethics rules have a liberal choice of law provision that allows the law firm to operate pursuant to the most lax legal conflict rule of all the jurisdictions the firm is operating in.

“With nearly 700 offices in over 180 jurisdictions, our attorneys have a dizzying array of options for getting around conflicts.  We basically have license to do anything we want in terms of representing adverse parties, even in concurrent litigation and transactions.”  Buckley said.

“It’s like Christmas every day!” said a partner in the firm’s highly lucrative Intellectual Property department who did not wish to be named.

While the flexibility in avoiding conflict issues is a boon for GLA lawyers, some legal industry analysts questioned whether clients might be displeased with the prospect of their counsel suing them on behalf of their direct competitors.

Buckley brushed off the concern.  “We’re confident that current and prospective clients will conclude that the advantage of being represented by the largest and most prestigious law firm in the world outweighs any potential loyalty issues.”  He added that GLA has “unparalleled global reach.”

“Informed Consent Through Our LAWDICK”

“Besides,” Buckley said, “we provide full disclosure and always obtain informed consent through our legitimate advance waiver of disloyalty-induced conflict contract (LAWDICK) provision, which I ordered to be inserted into all of our engagement letters.  The LAWDICK is a neat little trick we picked up from the legal conflict rules in Zimbabwe,” where GLA has nine offices.

Standard in GLA engagement letters, the LAWDICK requires a client to waive any conflicts that would arise by the firm taking engagements adverse to the client and applies both retroactively and prospectively.

Buckley was coy about the language of the LAWDICK provision, but Green Patent Blog was able to obtain a copy of the firm’s standard engagement letter from an unnamed source.  (Literally.  For administrative efficiency, GLA has stripped its associates of names and identities in favor of an internal numbering system.  The engagement letter was provided to us by Associate No. 52,961).

An excerpt of GLA’s cutting edge LAWDICK is reproduced below:

GLA McKenzie Long & Hugeo is a law firm of tens of thousands of lawyers and non-lawyer professionals in over 180 jurisdictions around the world and is involved in all kinds of business dealings, negotiations, and disputes with other clients of the firm.  In consideration of GLA’s acceptance of this engagement, the Client agrees that GLA may, in the past, present, or future, and throughout all time, anywhere in the Universe, represent existing or new clients in any matter relating to the Client, including, without limitation, litigation against the Client, negotiations directly or indirectly adverse to the Client or the Client’s interests, even if substantially related to this representation or any other matters GLA has had, currently has, or will have with the Client.  The Client further agrees that GLA may represent direct competitors of the client in matters directly or indirectly adverse to the Client or the Client’s interests and/or may represent employees, officers, affiliates or subsidiaries of the Client in matters directly or indirectly adverse to the Client.  The Client waives any and all rights to object to any such matter as described above.  This waiver notwithstanding, the Client agrees that GLA is completely and utterly loyal to the Client and will always act as a zealous advocate for the Client (unless of course another engagement comes along that could generate higher fees for GLA than those generated by working on matters for the Client).  Any questioning of GLA’s loyalty to the Client by the Client will be deemed a material breach of this agreement and will be grounds for termination of this agreement.

In any event, it seems clear that GLA will continue to grow and will be the largest international law firm for a long time to come.  Buckley told us that he is committed to exponential growth as he emphasized the firm’s “unparalleled global reach.”

He views the expansion as a major part of his legacy as managing partner.  “That, and the firm LAWDICK inserted at my insistence.”

Even with 682 other locations, Buckley said he is particularly proud of the new Antarctica office and summed up its significance for the firm:

“These days there may be other international law firms that can say the sun never sets on their offices, but GLA is the only firm that can say the ice never melts on our offices.”

“Plus,” he added, “GLA provides unparalleled global reach.”