In what seems to be a novel way of exploiting the public disclosure function of patent applications, the U.S. Environmental Protection Agency (EPA) recently began reviewing applications for pesticides in connection with the agency’s disclosure requirements and enforcement actions.

As discussed in this article by Lawrence Culleen, an environmental lawyer at the Arnold & Porter law firm, makers of pesticides are required to inform the EPA of potential adverse effects of certain chemicals and products.

In a recent lawsuit objecting to its decision to register a pesticide, EPA officials found additional details in patent filings showing that the chemical components of the product could have a synergistic effect such that the product might more effectively control unwanted weeds.

This information about the combination of active ingredients, the article says, may be relevant to the agency’s product registration terms, approval of instructions for use, application rates, and warnings, and suggests that the product might have adverse effects on “non-target organisms.”

The type of information the EPA officials discovered is fairly common in patent applications and related documents submitted to the U.S. Patent and Trademark Office (USPTO).  In attempting to demonstrate the patentability of an invention, applicants sometimes point to data that they argue show “unexpected results” or levels of effectiveness significantly better than state of the art products.

Pharmaceutical and chemical patent applications, in particular, often provide multiple examples of compositions or solutions and testing data showing their effectiveness.

The interesting question is whether the EPA (or other agencies, for that matter) will use this tactic in fields other than pesticides.  Is there a need for review of patent applications in other technology areas?

Theoretically, the Federal Drug Administration might be interested in patent applications relating to pharmaceuticals, biologics, and medical devices.  But the FDA approval process is rigorous and the reporting requirements strict.

Query whether other technologies relating to the environment would lend themselves to this type of scrutiny by the EPA, or whether green technology patent applications would interest other agencies (e.g., the Department of Energy).

In light of the Volkswagen emissions scandal, it would have been prescient of the EPA to search for patent filings relating to VW’s electronic control module, the software that activated its vehicles’ emissions controls during testing.  If they had found such documents a while ago, they might have provided an important early clue about the scandal to come.

A previous post discussed the Volkswagen emissions scandal in the context of other greenwashing cases and noted that it may exemplify a new trend of high-tech greenwashing.

Last year, Volkswagen admitted that it had intentionally programmed a number of its diesel vehicles to activate emissions controls only during testing.  The vehicles’ software allowed the nitrogen oxide (NOx) output to satisfy U.S. emissions standards during testing while producing much higher emissions during actual driving conditions.

Recently, the U.S. Department of Justice (DOJ) filed a civil complaint against Volkswagen seeking injunctive relief and monetary penalties for the German automaker’s actions.  The complaint also names Audi and Porsche as defendants.

Filed in U.S. District Court for the Eastern District of Michigan at the request of the U.S. Environmental Protection Agency (EPA), the complaint alleges that the deceptions and emissions violate certain provisions of the Clean Air Act (CAA) pertaining to NOx emissions and testing procedures.

Those provisions, and related regulations, require car manufacturers to obtain certification to sell cars in the United States.  As part of the certification process, the manufacturers need to disclose and justify any auxiliary emissions control device (AECD) and explain why it is not a “defeat device” that reduces emission controls under normal operating conditions.

The DOJ alleges that in the testing of a number of cars (the “2.0L Subject Vehicles” and the “3.0L Subject Vehicles”) the defendants failed to disclose the software (the “electronic control module” or “ECM”) which activated the emissions controls during testing, and that the ECM is an AECD.

Paragraph 69 of the complaint describes the software for one set of vehicles and what it does during EPA emissions tests:

During FTP emission testing, the 2.0L Subject Vehicles’ ECM run software logic and/or calibrations that produce compliant emission results under an ECM calibration that VW referred to as the “dyno calibration” (referring to the equipment used in emissions testing, called a dynamometer).  At all other times during normal vehicle operation, the 2.0L Subject Vehicles’ ECM software run a separate “road calibration” that reduces the effectiveness of the emission control system.  In other words, the 2.0L Subject Vehicles ECM software tracks the parameters of the FTP and causes emission control systems to underperform (or fail to perform) when the software determines that the vehicle is not undergoing the FTP.

The complaint alleges that Volkswagen knowingly concealed facts  that would have revealed the existence of the methods performed by the software.

The claims include selling vehicles that don’t comply with CAA emissions requirements, tampering with the vehicles during testing, and certain EPA reporting violations.

The DOJ is seeking an injunction that would prohibit the defendants from selling any vehicles in the United States that fail to comply with the EPA’s emissions certification requirements.  In addition, the feds have asked the court to prohibit the defendants from selling vehicles equipped with any non-compliant AECD or defeat device.

The complaint also requests that civil penalties be imposed in the form of fines of up to $37,500 per vehicle for each violation of the CAA.

Based on an EPA official quoted in this article published by Biodiesel Magazine, it sounds like the feds were not getting the remedial steps they wanted out of Volkswagen (“So far, recall discussions with the company have not produced an acceptable way forward.”).  Seems this lawsuit was filed to put more pressure on the automakers.

Envision Solar (Envision) is a San Diego-based company that makes solar parking structures that can be used to charge electric vehicles, support outdoor digital advertising, and enhance energy security.  What makes Envision’s products unique is that unlike most parking lot solar-powered vehicle charging stations, most of the company’s systems have the ability to track the movement of the sun.

According to Envision’s President and CEO Desmond Wheatley, 90% of Envision’s deployments have tracking capability.  Why tracking?  He echoed my thoughts exactly:  because it’s “cool.”

Also, parking lots are “hyper-restrained” in geography so a solar charger needs to maximize energy density in a very small space.  Incorporating tracking helps in that regard.

Envision’s two major product offerings are the Solar Tree® and the EV ARCâ„¢.  The company owns at least seven U.S. patents and pending applications covering various aspects of the technology in these products.

U.S. Patent No. 7,705,277 (‘277 Patent), issued in 2010, covers Envision’s original design.  Entitled “Sun tracking solar panels,” the ‘277 Patent is directed to a system for maximizing solar energy utilization by moving a solar panel to track movement of the sun from sunrise to sunset.  Movements of the solar panel are accomplished daily in accordance with a programmed schedule of consecutive cycles.

A subsequent patent issued in early 2014 is directed to a refined design better suited for solar tracking in a parking lot.  The system covered by U.S. Patent No. 8,648,551 (‘551 Patent) is significant, Wheatley said, because instead of the tracker causing the solar panel to swing in to the drive aisle, it instead bows.

According to the ‘551 Patent, the rotation of a cylindrical knuckle in the tracking system “allow[s] the solar panel to continuously reorient while maintaining a substantially stationary footprint.”

Wheatley told me the company’s most important intellectual property is that around the features of the EV ARCâ„¢.

Wheatley mentioned several advantageous features of the EV Arc.  First and foremost is its autonomy, i.e., it is not connected to the utility grid.  Some of the structural features are also important, including the ability for the thin base plate to support heavy vehicles and the high-traction material of the base plate, which allows it to remain stationary.

U.S. Patent No. 9,209,648, issued in November 2015, is entitled “Self-contained renewable battery charger” and is directed to a charging system (10) comprising a portable unit (12) that includes a moveable docking pad (16) having a base (18) and compartment (20) for holding a storage battery (18).

The portable unit (12) includes a column (24) having a first end (26) mounted onto the docking pad (16) and a second end (28).  A solar array (30) is affixed to the second end (28) of the column (24).  The unit has a structural canopy with a beam (32) and cross members (34) attached to the column (24) to support the photovoltaic modules of the solar array (30).

The company also has IP around the mobility and installation of its systems, including a specialized trailer and hydraulic ram, ARCâ„¢ Mobility, for transportation and deployment purposes.

Wheatley and Envision are very aware of the importance of patent protection in the U.S. and beyond.  The company’s patents, he said, “prevent smaller competitors from copying” their technology.  They also might stop larger customers from buying pirated products.  In general, a strong IP portfolio increases the company’s value in the investor community.

With investments of about $200 billion on EV charging, the company sees China as an important market and has filed patent applications there.  Wheatley told me that Chinese patents allow Envision to bring powerful partners aboard in China to protect the company’s business ventures there.

Envision Solar continues to innovate and isn’t stopping at car charging; they’re working on EV ARCâ„¢ eBike and eMotorcycle charging as well.  Many more patent applications will certainly follow.

In another big success for Paice, the hybrid vehicle technology company recently reached an agreement to license all of its tech to Hyundai and Kia.

This comes after a Baltimore jury found that the Korean automakers owed Paice $28.9 million in damages for infringing three patents relating to hybrid electric vehicles: U.S. Patent Nos. 7,237,634, 7,104,347, and 7,559,388.  All three patents are entitled “Hybrid vehicles” .

Paice has been an extremely successful non-practicing entity, using patent litigation in the federal courts and the U.S. International Trade Commission to bring major automakers to the negotiating table.

In 2010 the company settled major patent litigation with Toyota over the Prius and other hybrid models when the Japanese automaker licensed all of Paice’s patents.  Also that year, Paice and Ford became embroiled in patent litigation over hybrid vehicles.

According to the company’s press release about the Kia/Hyundai deal:

Paice has now licensed all or part of its hybrid vehicle technology portfolio to Toyota, Hyundai/Kia, and Ford – three of the world’s six largest automakers.  These three companies currently account for 90% of all hybrid vehicle sales in the United States.

Does all this litigation and licensing make Paice one of the oft-maligned “patent trolls?”  I think not.

The company should not be put in that category for a couple of reasons.  First, the founder of the company and inventor of the technology, Alex Severinsky, is a true innovator and pioneer, having invented much of Paice’s technology at least as early if not earlier than the large automakers.

Most of the patent assertion entities we think of as trolls are not innovators, but instead buy patents to assert in litigation and offer to license.

Second, Paice made genuine efforts at ex ante licensing.  That is, the company approached Toyota with offers to license its technology before any hybrid vehicles were ever sold.

This is in contrast to the business model of acquiring and asserting patents, with licensing offers, after the allegedly infringing products have been manufactured and racked up lots of sales (ex post licensing).

Paice’s success is not a surprise when one understands the power of its patents.  A 2010 report by a patent analytics firm called Ambercite analyzed 58,000 hybrid car patents and their interrelationships using network patent analysis methodology and found Paice’s portfolio to be the strongest, better than all major car manufacturers’ hybrid car patents.