It’s been quite a while since I’ve addressed green patents in the context of the UN Framework Convention on Climate Change (UNFCCC) and other international efforts to develop climate change policy.

A guest post by Prof. Matthew Rimmer discussed the UNFCCC Doha meeting in December 2012, and I commented on the 2010 Cancun climate change agreement.

Summarizing where we left off, most of the middle-income countries (AKA “developing” countries) together with the least developed countries (collectively,  “G77 + China”) have taken the position that IP protections act as a barrier to development and transfer of green technologies in and to their domestic markets.

The “rich-world” countries, by contrast, advocate strong intellectual property rights and believe they facilitate green tech development, transfer, and deployment.

What is the reality?  We don’t know.

A 2008 report by the International Centre for Trade and Sustainable Development (ICTSD) equivocally concluded that “IP is potentially both an incentive and an obstacle to the transfer of technology.”  The report also noted that “no comprehensive study has been conducted on the impact of IP rights” in green technologies.

Half a decade later, the international community plugs on, and little has changed.

Three Working Groups of the UN’s Intergovernmental Panel on Climate Change each generated a report this year that addresses various aspects of climate change.  Working Group II’s report on Impacts, Adaptation and Vulnerability and Working Group III’s report on Mitigation of Climate Change each addresses IP issues, though the contribution to the debate is small both in volume and significance.

The report of Working Group II skates over familiar ground, stating that in many cases “patents and other intellectual property protection constrain technology transfer” but noting the opposing view that “strong IP protection in receiving countries is facilitating technology transfer from advanced countries…”  The report does say the evidence suggests that middle-income countries are benefiting from exports, foreign direct investment, and technology licensing associated with IP protection.

Working Group III’s report is similar in substance and tone, observing that IP protection can provide incentives for innovation but “also works to slow the diffusion of new technologies, because it raises their cost and potentially limits their availability.”  Elaborating on the favorable evidence on tech transfer to middle-income countries, the report says IP protection “may be necessary to limit the risk for foreign firms that transfer of their technology will lead to imitation and resulting profit erosion.”

But like the ICTSD report from six years ago, the 2014 report of Working Group III still finds insufficient data to conclusively resolve this debate:

In summary, there is inadequate evidence in the literature regarding the impact of IP policy on transfer of GHG-mitigating technologies to draw robust conclusions.

Where is the comprehensive research we need on the true impact of IP rights on green technology development and diffusion?

I’d do it if someone would fund it…

Tesla’s intellectual property is in the news again, but this time it’s a trademark issue.

A previous post reported on Tesla’s trademark problem in China.  Evidently, a businessman named Zhan Baosheng had registered the TESLA (or “Te Si La” transliterated) trademark in China in 2006, in both English and Chinese.

While Zhan’s trademark rights initially blocked Tesla from using the mark there, in early 2014 the company announced that it had resolved the matter though a court decision granting it the right to use the TESLA mark in China.

So Tesla seemed to be in the clear.  But there is renewed uncertainty about the company’s ability to use its brand in China.

Apparently unhappy with the initial result, Mr. Zhan is now suing Tesla for trademark infringement.  According to his lawyer, Zhan is demanding that Tesla stop all sales and marketing activities in China, shut down showrooms and charging facilities, and pay him 23.9 million yuan ($3.85 million) in compensation.

Per my prior post, it seems like Zhan is seeking nothing more than a big pay day, as opposed to protecting legitimate business interests.

The case will be heard on August 5th by the Beijing Third Intermediate Court.

This is not the first time a U.S. clean tech company has faced IP difficulties in China – American Superconductor has been involved in major copyright and trade secret litigation with Chinese wind turbine maker Sinovel.

In previous posts (e.g., here and here), I’ve discussed cases of fraudulent renewable energy credits and other environmental crimes and argued they ought to be considered greenwashing.

A recent indictment is another case in point.  The U.S. Department of Justice (DOJ) recently announced that a federal grand jury in Houston, Texas indicted an individual for allegedly selling fraudulent renewable identification numbers (RINs).

The indictment alleges that an individual using the name Philip Joseph Rivkin operated and controlled several Houston-based fuel companies including Green Diesel LLC, Fuel Streamers Inc. and Petro Constructors LLC.

The defendant allegedly claimed that Green Diesel produced millions of gallons of biodiesel at its Houston facility then generated and sold about 45 million RINs based on the claim.  However, according to the indictment, Green Diesel did not actually produce any biodiesel at its facility.  The defendant allegedly made millions of dollars selling the fraudulent RINs.

This type of fraudulent activity undermines the policy goal of RINs – to ensure a certain level of renewable fuel in U.S. gasoline – by damaging the market for valid RINs and ultimately reducing the actual volume of biofuels in circulation.

According to a spokesman for a biodiesel trade group quoted in this StarTribune article, the RIN scam has hurt the biofuels industry by making obligated parties more wary of purchasing the credits from biodiesel producers.

The fraud and resulting damage are recognizable when we view the putative RIN purchasers as green consumers, albeit commercial consumers instead of individuals, falling victim to false representations about the validity of renewable energy-based financial products.

In apparent recognition of the damage caused by fraudulent RINs, Biofuels Digest reported that the U.S. Environmental Protection Agency recently finalized additional regulations to ensure oversight of RIN generation and improve the RIN market.

In a prior post, I discussed the Tesla-Patent Commons.  Further to that piece and the other media attention around Elon Musk’s announcement, there have been a couple of notable follow-on lists and analyses of the Tesla patents, which now belong to all of us.

First, Envision IP published this infographic, which provides a nice breakdown of the Tesla patent portfolio.  According to their count (as of June 12, 2014), Tesla had 172 issued U.S. patents and 123 published U.S. applications.

By far the largest group is batteries & charging technology, which makes up 120 patents and 71 applications.  Motor & drive controls is next with 20 patents and 15 applications, followed by 10 patents and 4 applications directed to frame & chassis inventions.  Bringing up the rear are doors & latches, HVAC tech, and sunroofs.

Cleantechnica offers a footnote of sorts in a recent piece noting that 25 Tesla patents and applications relate to battery fire & hazard risk reduction technologies.   An example of an issued patent is U.S. Patent No. 8,445,126, entitled “Hazard mitigation within a battery pack using metal-air cells.”

I figure it’s good for us to know more details about these patents.  After all, they belong to us.

Patents traditionally are used for the private good of the property holder. At best, the public benefits only indirectly from the resulting technology innovations. But what if patents were used directly for the public’s good, to reduce carbon emissions?

Specifically, what if one of more Green NPEs assembled and enforced a portfolio of patents to impose, in effect, a carbon royalty on moving greenhouse gases from ground to air?

Using patents to impose a carbon royalty has some fundamental advantages.

First and foremost, patents are private property and private-property owners have huge advantages in civil litigation over mere concerned citizens. For example, unlike traditional environmental civil litigation, there is no difficult “standing” hurdle to clear.

Second, patent licensing is extremely flexible, particularly given the weakened state of the “patent misuse” defense today. Once a patent-infringement suit gets a target’s attention, there is no end to the variety of licensing agreements and royalty-payment structures that can be tailored to a particular targeted practice and actor to serve both private business interests and also publicly beneficial carbon-emission-reduction goals.

For example, the Green NPE might seek an injunction under 35 U.S.C. § 271(g), against sale of bitumen-derived petroleum coke produced by the patented method, and license the patent only for use with improved petroleum coke processing techniques or equipment but not for coke derived from tar sands bitumen.

Third, despite some weakening over the past decade, patents still are monopolies with powerful exclusionary rights, and the “public interest” is a key factor courts consider when deciding whether to enjoin infringements.

What kinds of patents?

First, obviously, patents on inventions important to the offending technology. E.g., a patent covering a method or component widely used in the production or processing of bitumen-derived petroleum coke. Such patents can be enforced against selected targets to either enjoin the offending activity outright or to license it with restrictions geared toward curbing impacts on the climate.

Second, less obviously, patents on important ancillary technology, such as information technology, used by the targeted entity in connection with the targeted activity. This category includes patents on “beneficial” technologies that, e.g., decrease the emissions from a particular activity, but that companies need to use to remain competitive. These too can be enforced and licensed in ways that curb the offending activities of selected targets.

What’s needed to pursue this idea?

A network of patent attorneys, industry engineers and scientists, environmentalists, and investors. Perhaps the network would form one or more Green NPEs to build and enforce the patent portfolio, possibly in cooperation with the most progressive companies in the industry.

Comments? If you’re interested in exploring this idea please e-mail John D. Vandenberg, a patent litigator in Portland, Oregon, at patentsforthepublicgood@gmail.com.

John Vandenberg has been representing clients in patent litigation for more than 30 years and recently argued successfully before the U.S. Supreme Court on the issue of patent “indefiniteness.”

A number of green patent complaints have been filed in the last several months in the areas of energy management software, LEDs, smart meters, vertical axis wind turbines, and wastewater treatment.  This post covers new lawsuits filed from the end of March through the end of June.

Energy Management Software

Intercap Capital Partners, LLC  v. BuildingIQ, Inc.

On April 3, 2014, Intercap filed a patent infringement complaint against BuildingIQ in the U.S. District Court for the District of Delaware.  Intercap asserted U.S. Patent No. 8,078,330 (‘330 Patent), alleging that the BuildingIQ software of system infringes the ‘330 Patent.

Entitled “Automatic energy management and energy consumption reduction, especially in commercial and multi-building systems,” the ‘330 Patent is directed to methods of managing energy usage data including monitoring current energy usage of the energy consumption devices in a building, monitoring building temperature, a building humidity, a building CO_2 level, a weather forecast and a real-time energy price, and initiating a real-time control of each energy consumption device based on the variables in response to a forecast that a new energy usage peak is approaching.

LEDs

Honeywell International Inc. v. Cree, Inc.

Honeywell sued major LED manufacturer Cree for infringement of U.S. Patent No. 6,373,188 (‘188) and Reissue Patent No. RE41,685 (a reissue of U.S. Patent No. 6,666,567).

The ‘188 Patent is entitled “Efficient solid-state light emitting device with excited phosphors for producing a visible light output” and directed to and LED having a phosphor layer and a reflector means adjacent to one side of the phosphor layer for reflecting some of the radiation and light emission that exits from the phosphor layer back into the phosphor layer.

The reissue patent is entitled “Light source with non-white and phosphor-based white LED devices, and LCD assembly” and relates to a light source with an LED coupled to the floor of an optical cavity to permit light to be emitted from the base of the LED and a reflective protrusion below the LED to aid in redirecting light forward.

The complaint was filed March 31, 2014 in the U.S. District Court for the District of New Jersey.

Koninklijke Philips N.V. et al. v. Schreder Lighting LLC et al.

Filed May 27, 2014 in the U.S. District Court for the District of Massachusetts, Philips’ complaint asserts the following twelve LED patents:

U.S. Patent No. 6,094,014, entitled “Circuit arrangement, and signaling light provided with the circuit arrangement”

U.S. Patent No. 6,234,645, entitled “LED lighting system for producing white light”

U.S. Patent No. 6,234,648, entitled “Lighting system”

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

U.S. Patent No. 6,513,949, entitled “LED/phosphor-LED hybrid lighting systems”

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

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

U.S. Patent No. 6,692,136, entitled “LED/phosphor-LED hybrid lighting systems”

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

U.S. Patent No. 6,806,659, entitled “Multicolored LED lighting method and apparatus”

U.S. Patent No. 6,972,525, entitled “LED switching arrangement”

U.S. Patent No. 7,274,160, entitled “Multicolored lighting method and apparatus”

According to the complaint, Schreder’s floodlight, street-light, residential and urban area LED lighting products, including the Alura LED, FV32 LED, Hestia LED, Piano, Teceo, Akila, Isla LED, Modullum, Neos LED and Nemo brands for, infringe one or more of the asserted patents.

Smart Meters

Sensor-Tech Innovations LLC v. Texas-New Mexico Power Company

Austin, Texas-based Sensor-Tech filed a patent infringement suit against the Texas-New Mexico Power Company (TNMP) for alleged infringement of a patent related to smart meter technology.

The complaint, filed in federal court in Marshall, Texas on June 20, 2014, asserts U.S. Patent No. 6,505,086 (‘086 Patent).  Entitled “XML sensor system,” the ‘086 Patent is directed to a sensor sommunication system adapted to transmit a sensor data file in XML format.

According to the complaint, TNMP’s advanced metering system infringes at least three claims of the ‘086 Patetn.

Vertical Axis Wind Turbines

SAWT Inc. et al. v. Joe Moore Construction Inc. et al.

On May 13, 2014 SAWT filed a complaint for patent infringement in federal court in Los Angeles.  SAWT has accused Joe Moore Construction, d/b/a Wind Sun Energy Systems and co-defendant Urban Green Energy of infringing U.S. Patent No. 7,967,569 (‘569 Patent).

The ‘569 Patent is entitled “Vertical shaft wind turbine and method of installing blades therein” and directed to a vertical shaft wind turbine wherein the airfoil of each turbine blade is an asymmetrical camber airfoil, each blade is installed with only the convex surface facing the vertical shaft, and a rotary angle of each blade is between 0 and 15 degrees.

The ‘569 Patent is owned by co-plaintiff Shanghai Aeolus Windpower Technology; SAWT is a non-exclusive licensee.  This is an interesting one as it’s rare to see litigation over small (non-utility scale) wind turbines, particularly of the vertical axis type.

Wastewater Treatment

Chaffin v. Braden and LBC Manufacturing

Mark N. Chaffin, an individual, sued LBC Manufacturing for infringement of U.S. Patent No. 6,932,912, entitled “Wastewater treatment system for residential septic systems” (‘912 Patent).

The ‘912 Patent is directed to wastewater treatment systems and methods wherein a chlorine supply tube is in communication with a venturi chamber and in constant fluid communication a chlorine supply in a chlorine supply canister.  As recirculating pumped sewage effluent flows through the venturi chamber, chlorine from the supply canister is continuously drawn into the venturi chamber and into a recirculation pipe.

Filed April 16, 2014 in federal court in Victoria, Texas, the complaint alleges that the LBC500 liquid bleach chlorinator infringes the ‘912 Patent.

Floating Island International (FII) is a Montana-based company that has developed technology for creating islands that can effectively support plant and animal life (full disclosure:  FII is a client of my firm and FII CEO Bruce Kania agreed to be interviewed for this post).

The company’s BioHaven® floating islands help maintain the health of wetland ecosystems through a “concentrated” wetland effect, i.e., higher removal rates of nitrate, phosphate and ammonia as well as reduction of  total suspended solids and dissolved organic carbon in waterways.

According to Kania, what differentiates FII from other floating treatment wetland providers is that FII’s islands are made of massive biofilm grown within a matrix that includes microbes and their residue, with high volumes of trapped biogas.  Put another way, the company’s floating islands “incorporate nature’s models to solve problems with water.”

While other floating island technologies achieve buoyancy through use of buoyant chambers in a raft, FII used either buoyant nodules or foam sealant interspersed within the matrix.

FII’s patent portfolio includes a number of worldwide patent families focusing on different aspects of the company’s technology, including:

U.S. Patent Nos. 8,327,579 and 8,250,808 and U.S. Patent Application Publication No. 2011/0146559 (‘559 Application), each entitled “Super enhanced, adjustably buoyant floating island.”  These patents and applications are directed to floating islands comprising at least one layer of water-permeable, non-woven mesh material and including different innovative features for achieving and adjusting the buoyancy of the islands, such as pressure injected foam sealant.  Figure 4 of the ‘ 559 Application is reproduced here:

U.S. Patent No. 8,372,277, entitled “Floating treatment streambed,” is directed to a floating streambed including a circulation pump and treatment channels made of a permeable matrix.  The water entering the treatment channels flows both horizontally through the treatment channel and into the water body and also vertically downward through the permeable matrix of the treatment channels.

U.S. Patent 7,784,218 is entitled “Combination cell foam floating island” and directed to a floating island comprising a flat sheet insert in the matrix layers of the island that traps gas underneath the insert.  A representative figure is reproduced below:

FII’s patent portfolio forms the foundation of the company and is critical for its success spreading its technology around the world.  As Kania told me, “without IP and an ability to enjoy a limited monopoly on behalf of its license holders, our ability to forward in the undeveloped world is minimal.”

The company has entered into a number of licensing deals.  Partners and potential partners are “intrigued and energized for a clean tech solution to water quality issues.”  FII’s licensees include a variety of people and business entities that have business dealings around water, particularly wetland work, but also include companies involved in plastics recycling and stone masonry.

Though FII’s path is a “departure from conventional green technology efforts” because it’s not about renewables or conservation per se, its technology is making an impact and is most definitely green.