REG Synthetic Fuels, LLC (REG) owns U.S. Patent No. 8,231,804, entitled “Even carbon number paraffin composition and method of manufacturing same” (‘804 Patent).

The ‘804 Patent is directed to paraffin compositions containing primarily even carbon number paraffins and methods of making them.  Made from bio-renewable feedstocks, these saturated hydrocarbon chains are useful as phase change materials and can be used for home insulation.

Neste Oil Oyj (Neste), a Finnish oil refining company with a focus on advanced, low-emission transportation fuels, petitioned the U.S. Patent and Trademark Office for inter partes review of the ‘804 Patent.

The Patent Trial and Appeal Board (PTAB or Board) found claims 1, 3, 4 and 8 invalid as anticipated by a first prior art reference (Craig) and also found claims 1-3, 5 and 8 invalid as anticipated by a second prior art reference (Dindi).  REG appealed.

The statutory classification of the Dindi reference is crucial here:  it is a published patent application that qualified as prior art because it was filed before the ‘804 Patent application’s filing date.  This means that REG could remove Dindi as prior art if REG could marshal the requisite documentary evidence to show that the inventor of ‘804 Patent conceived of the invention before the Dindi filing date and was diligent in reducing the invention to practice.

Turns out REG did have such evidence, but the Board excluded critical portions of it as inadmissible hearsay.

On appeal, REG argued that the Board was incorrect to exclude the evidence, in particular Exhibit 2071 which consisted of emails between the inventor and third parties, in one of which the inventor stated:

[He has] had more difficulty than [he] expected trying to recover a 90+% purity nC18 product using [his] lab distillation glassware (80% purity C18 is the best [they] got).

This is significant because the claimed invention of the ‘804 Patent includes an 80 wt% purity C18 product.

The Board considered Exhibit 2061 to be hearsay because it did not verify the actual creation of the 80 wt% C18 product.

In a recent decision, the Court of Appeals for the Federal Circuit reversed this evidentiary ruling of the Board because Exhibit 2061 was not introduced into evidence for the truth of the statement therein.  Rather, the email itself provides evidence that the inventor conceived of the invention, irrespective of whether he actually created the product:

We find that the Board erred to the extent that it excluded the content of  Exhibit 2061 based on hearsay because REG offered Exhibit 2061 for the non-hearsay purpose to show that [the inventor] thought he had achieved 80 wt% purity C18 product. The act of writing and sending the email is, by itself, probative evidence on whether [the inventor] recognized – at the time that he had written the email – that the sum of the weight percentages of even-carbon-number paraffins in his compositions was at least 80 wt% and communicated this to a third party.

The court held, together with two other exhibits, Exhibit 2061 shows that the inventor of the ‘804 Patent “could create a composition with the claimed property of at least 80 wt% even-carbon-number paraffins” and was able to do so before the Dindi reference’s filing date:

[The email in Exhibit 2061] expressly states that he could achieve at least 80% purity C18 product, which was new in April 2008 because this product did not exist in the prior art, given the record before us.

So the Federal Circuit reversed the Board on conception of the invention and the admissibility of the Exhibit 2061 and sent the case back to the Board to determine whether the inventor was diligent in reducing the invention to practice, and REG and its ‘804 Patent survive to fight another day.

A number of new green patent infringement complaints were filed in July and August in the areas of advanced batteries, biofuels, LEDs, and electric motors.

Advanced Batteries

Dynavair LLC v. AMS USA, Inc.; Dynavair v. Atmel; Dyanavair v. Cobham Advanced Electronic Solutions; Dynavair v. Eaton; Dynavair v. Freescale Semiconductor; Dynavair v. Intersil; Dynavair v. Linear Technology; Dynavair v. Microchip Technology; Dynavair v. OKW Electronics; Dynavair v. Samsung SDI America; Dynavair v. SII Semiconductor; Dynavair v. Texas Instruments

Dynavair has initiated at least twelve lawsuits accusing, inter alia, AMS USA, Atmel, Eaton, Freescale Semiconductor, Samsung, and Texas Instruments of infringing U.S. Patent No. 6,271,645 (‘645 Patent).

A representative complaint, filed July 5, 2016 in federal court in Marshall, Texas, against AMS lists AMS’s AS8506C Battery Cell Monitor and Balancer IC as the accused instrumentality.  According to the complaint, the product balances energy levels between two battery groups in a battery pack.

The ‘645 Patent is entitled “Method for balancing battery pack energy levels” and directed to a method and circuit for balancing energy levels among first and second battery groups within a battery pack by controlling a first energy level responsive to a first state of charge value indicative of a first energy level of the first battery group and a second energy level responsive to a second state of charge value indicative of the energy level of the second battery group so as to balance the first and second energy levels.

Biofuels

DSM IP Assets et al. v. Lallemand Specialties, Inc. et al.

Filed July 13, 2016 in U.S. District Court for the Western District of Wisconsin, DSM’s complaint accuses Lallemand and Mascoma LLC of infringing a patent relating to yeast products used in ethanol production.

U.S. Patent No. 8,795,998 is entitled “Fermentative glycerol-free ethanol production” and directed to transgenic yeast cells that reduce or eliminate the production of glycerol during fermentation.

More particularly, the patent relates to a recombinant yeast cell lacking enzymatic activity needed for the NADH-dependent glycerol synthesis or the cell having reduced enzymatic activity with respect to the NADH-dependent glycerol synthesis.

The accused products are yeast products, including Lallemand’s TransFerm Yield+ yeast.

LEDs

Lighting Science Group Corporation v. Titch Industries, Inc. et al.

Lighting Science Group Corporation v. Shenzhen Jiawei Photovoltaic Lighting Co.

Lighting Science Group Corporation v. Satco Products, Inc.

Lighting Science Group Corporation v. Technical Consumer Products, Inc.

Lighting Science Group Corporation v. Wangs Alliance Corporation et al.

Lighting Science Group Corporation v. Amax Lighting

Lighting Science Group filed at least six more infringement suits in July, asserting various combinations of the following three patents: U.S. Patent No. 8,201,968 (‘968 Patent), U.S. Patent No. 8,967,844 (‘844 Patent), and U.S. Patent No. 8,672,518 (‘518 Patent).

Entitled “Low profile light,” the ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.

The ‘518 Patent and the’ 844 Patent are entitled “Low profile light and accessory kit for the same” and relate to LSG’s disc light LED devices.

With the exception of the Shenzhen complaint, filed July 11, 2016 in U.S. District Court for the Northern District of California, all of the lawsuits were filed in Orlando, Florida.  The Titch complaint was filed July 7th; the Satco complaint and the Technical Consumer Products complaint were filed July 13th; the Wangs Alliance complaint and the Amax Lighting complaint were filed July 22nd.

Lexington Luminance LLC v. TCL Multimedia Holdings, Ltd. et al.

In a complaint filed July 13, 2016 in U.S. District Court for the District of Massachusetts, Lexington Luminance accused TCL Multimedia Holdings and TTE Technology of infringing U.S. Patent No. 6,936,851 (‘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.

The accused products include television model 40FD2700 using backlighting LEDS which, according to the complaint, use an infringing patterned sapphire substrate.

Lemaire Illumination Technologies, LLC v. LG Electronics USA, Inc. et al.

Lemaire Illumination Technologies sued LG for alleged infringement of three patents relating to LED lighting technology.

The patents-in-suit are U.S. Patent Nos. 6,095,661 (‘661 Patent), 6,488,390 (‘390 Patent) and 9,119,266 (‘266 Patent).

The ‘661 Patent is entitled “Method and apparatus for an L.E.D. flashlight” and the ‘390 Patent is entitled “Color-adjusted camera light and method” and these related patents are directed to an LED flashlight including  a control circuit for maintaining a predetermined light output level of the LED units as a charge on a battery varies.

The ‘266 Patent is entitled “Pulsed L.E.D. illumination apparatus and method” and directed to an illumination source for a camera including one or more LEDs and a control circuit for driving the LEDs with electrical pulses at a frequency high enough that light produced has an appearance to a human user of being continuous rather than pulsed.

Filed in federal court in Marshall, Texas on July 14, 2016, the complaint lists the LG G3 and G4 smartphones as accused devices.

Nichia Corporation v. Mary Elle Fashions, Inc. et al.

Nichia Corporation v. Lowe’s Companies, Inc. et al.

Nichia Corporation v. TCL Multimedia Technology Holdings, Ltd. et al.

Nichia filed these three lawsuits in July and August asserting U.S. Patent No. 7,915,631 (‘631 Patent) against Mary Elle Fashions, Lowe’s, and TCL.

The complaint against Mary Elle Fashions was filed July 19, 2016 in U.S. District Court for the Eastern District of Missouri and lists the Meridian 13w Equivalent Bright White G24 Non-Dimmable LED Bulb as the accused product.

The Lowe’s complaint, filed July 19, 2016 in federal court in Statesville, North Carolina, alleges that the Utilitech Pro 48-inch Strip Light and the Utilitech Pro 24-inch Strip Light infringe the ‘631 Patent.

The complaint against TCL was filed August 8, 2016 in U.S. District Court for the District of Delaware and names the TCL 48″ Class Television as the accused product.

Entitled “Light emitting device and display,” the ‘631 Patent is directed to an LED having a phosphor capable of absorbing a part of light emitted by a light emitting component and emitting light of a wavelength different from that of the absorbed light.

Nichia Corporation v. v. TCL Multimedia Technology Holdings, Ltd. et al.

Separately, Nichia also sued TCL in federal court in Marshall, Texas allegint that the TCL 55GS3700 55 inch 1080p Roku Smart LED TV infringes U.S. Patent No. 8,530,250 (‘250 Patent).

Entitled “Light emitting device, resin package, resin-molded body, and methods for manufacturing light emitting device, resin package and resin-molded body,” the ‘250 Patent is directed to a method of manufacturing an LED such that the optical reflectivity at a wavelength of 350-800 nm after thermal curing is 70% or more.

The method includes the steps of sandwiching a leadframe with a notched section, transfer-molding a thermosetting resin containing a light-reflecting substance, forming a resin-molded body on the leadframe, and cutting the resin-molded body and the leadframe along the notched section.

The complaint was filed August 8, 2016.

Seoul Viosys Co., Ltd. v. P3 International Corporation

This lawsuit was filed August 8, 2016 in U.S. District Court for the Southern District of New York.

In the suit, Seoul accuses P3 of infringing five LED patents:

U.S. Patent No. 7,982,207, entitled “Light emitting diode”

U.S. Patent No. 7,951,626, entitled “Light emitting device and method of manufacturing the same”

U.S. Patent No. 9,203,006, entitled “Light emitting device”

U.S. Patent No. 8,692,282, entitled “Light emitting diode package and light emitting module comprising the same”

U.S. Patent No. 8,168,988, entitled “Light emitting element with a plurality of cells bonded, method of manufacturing the same, and light emitting device using the same”

The accused products listed in the complaint include P3’s P7880 LED Bug Trap and P7885 LED Bug Trapper II.

Philips Lighting North America Corp. et al. v. GVA Lighting, Inc.

Philips has asserted four of its LED patents against Canadian company GVA, alleging that GVA’s STR9 RGBW linear surface mount LED luminaires infringe the patents.

The patents-in-suit are:

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. 7,014,336, entitled “Systems and methods for generating and modulating illumination conditions”

U.S. Patent No. 7,255,457, entitled “Methods and apparatus for generating and modulating illumination conditions”

The complaint was filed August 11, 2016 in the U.S. District Court for the District of Massachusetts.

Bitro Group v. Blueview Elec-Optic Tech

Bitro Group v. Global Lux

Bitro Group v. Jb Online LLC dba Ellumiglow.com

Bitro Group v. LEDwholesalers.com

Bitro Group v. The LED Light, Inc.

Bitro Group filed five lawsuits on August 16, 2016 against various defendants asserting infringement of U.S. Patent No. 9,113,558 (‘558 Patent).

The ‘558 Patent is entitled “LED mount bar capable of freely forming curved surfaces thereon” and directed to an LED tape light strip with a structure that allows it to be bent in the direction of its width so it can be used for lighting that must conform to unique shapes.

The complaints (Blueview Elec-Optic complaint; Global Lux complaint; JB Online complaint; LEDwholesalers.com complaint; The LED Light complaint) were all filed in U.S. District Court for the District of New Jersey.

The accused products are Blue View Elec-Optic’s Bendable Zig Zag LED tape, Global Lux’s Zigzag Ribbon lights, JB Online’s Wavelux Bendable 3528 LED Strip Light, LEDwholesalers’ Ultra-Flex 6.56-Feet Single Color LED Strip, and the LED Light’s Bendable Flexible LED Strips.

Innovative Display Technologies LLC v. LG Display Co. et al.

U.S. Patent Nos. 7,322,730, entitled “Light emitting panel assemblies” (‘730 Patent) and 7,178,965, entitled “Light emitting panel assemblies having LEDs of multiple colors” (‘965 Patent).

The ‘730 and ‘965 Patents relate to optical assemblies including a light emitter having at least one layer of a transparent film, sheet or plate through which light emitted by the light emitter passes.  A pattern of deformities on or in at least one side of the film, sheet or plate control an output ray angle distribution of light emitted by the optical assemblies.

The complaint was filed August 24, 2016 in federal court in Marshall, Texas.

The accused products are various mobile phones, tablets, televisions, monitors, laptops, and liquid crystal display modules containing edge-lit and/or 2-D array backlights.

Epistar Corporation v. Adamax, Inc.

In this action, filed August 30, 2016 in U.S. District Court for the Northern District of California, Epistar has asserted six patents relating to LED filament technology.

U.S. Patent No. 6,346,771, entitled “High power LED lamp”

U.S. Patent No. 6,489,068, entitled “Process for observing overlay errors on lithographic masks”

U.S. Patent No. 7,560,738, entitled “Light-emitting diode array having an adhesive layer”

U.S. Patent No. 8,240,881, entitled “Light-emiting device package”

U.S. Patent No. 8,791,467, entitled “Light emitting diode and method of making the same”

U.S. Patent No. 9,065,022, entitled “Light emitting apparatus”

The complaint names Adamax’s NewHouse Lighting Dimmable Flame Tip 3.5 W LED Vintage Edison Filament Bulb, 2200K as infringing products.

Electric Motors

Cannarella v. Volvo Car USA LLC et al.

An individual inventor, R. Thomas Cannarella, sued Volvo and others alleging infringement of U.S. Patent No. 8,232,661 (‘661 Patent).

The ‘661 Patent is entitled “System and method for generating and storing clean energy” and directed to a system for generating electrical energy from pressurized fluid and peristaltic compression and expansion cycles.

Filed August 17, 2016 in the U.S. District Court for the Central District of California, the complaint alleges that the defendants have made a commercial entitled “Highway Robbery: Volvo XC90 T8 Twin Engine Hybrid” featuring an infringing peristaltic energy generation system.

Previous posts (e.g., here and here) discussed various threads of the major biofuels patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo.

A relatively new mechanism for challenging the validity of a U.S. patent is inter partes review (IPR), an administrative trial proceeding before the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB) in which a third party can challenge the validity of a patent based on printed prior art publications.

Last year Butamax filed a petition with the PTAB for IPR of Gevo’s U.S. Patent No. 8,546,627 (‘627 Patent).  The ‘627 Patent is entitled “Renewable compositions” and directed to processes for preparing a renewable jet fuel.

The claimed processes comprise fermenting biomass with a microorganism, dehydrating the resulting alcohol to form biofuel precursors, and then subjecting the biofuel precursors to processes such as oligomerization, hydrogenation, and aromatization to form the fuel.

In a recent decision, the PTAB ruled that all 21 claims of the ‘627 Patent are invalid in view of several prior art references cited by Butamax.

More particularly, the PTAB held that U.S. Patent Application Publication No. 2008/0132741 to D’Amore discloses five of the seven steps of independent claim 1 of the ‘627 Patent.  Because the sixth and seventh steps of claim 1 are recited as optional, D’Amore was found to anticipate the claims.  D’Amore was also held to anticipate dependent claims 7, 11 and 14 of the ‘627 Patent.

As the primary prior art reference, the PTAB applied D’Amore in combination with several other printed publications in holding all of the claims invalid.  The PTAB also considered ASTM D1655 jet fuel standards as an important secondary reference and found that D’Amore in combination with the standards rendered claims 2-7, 11, 14 and 18-21 obvious.

The PTAB found an additional ground for invalidity of independent claim 18 in International, or PCT, Patent Publication No. WO 2007/061903 to Bradin.  Bradin is entitled “Alternative fuel and fuel additive compositions” and directed to alternative gasoline, diesel fuel, marine diesel fuel, jet fuel, and flexible fuel compositions including an alcohol and/or a glycerol ether or mixture of glycerol ethers, which can be derived from renewable resources.

In January and February, there were a number of green patent infringement lawsuits filed in the areas of biofuels, hybrid vehicles, LEDs, smart grid, advanced batteries, solar power, and water meters.

Advanced Batteries

BASF Corporation et al. v. Umicore N.V. et al.

In this lawsuit BASF and UChicago Argonne, LLC accuse Umicore and Makita Corporation of unfair trade practices, antitrust violations, and infringement of two patents relating to cathode materials for lithium-ion batteries.

The patents-in-suit are U.S. Patent Nos. 6,677,082 (‘082 Patent) and 6,680,143 (‘143 Patent), both entitled “Lithium metal oxide electrodes for lithium cells and batteries” and directed to a lithium metal oxide positive electrode for a non-aqueous lithium cell.

The cell is prepared in its initial discharged state and has a general formula xLiMO₂.(1−x)Li₂M′O_3 in which 0<x<1, and where M is one or more ion with an average trivalent oxidation state and with at least one ion being Mn or Ni, and where M′ is one or more ion with an average tetravalent oxidation state.

According to the complaint, Umicore is selling cathode materials that infringe the ‘082 and ‘143 Patents, and Makita is one of the companies importing and selling batteries incorporating the materials.  The lawsuit was filed February 20, 2015 in the U.S. District Court for the District of Delaware.

Biofuels

C T E Global, Inc. v. Novozymes A/S

In a complaint filed January 9, 2015 in the U.S. District Court for the Northern District of Illinois, C T E Global seeks a declaratory judgment of invalidity and non-infringement of two Novozymes patents relating to an enzyme used in biofuel production.  The patents are U.S. Patent Nos. 6,255,084 (’084 Patent) and 7,060,468 (’468 Patent).

The ’084 and ’468 Patents are entitled “Thermostable glucoamylase” and are directed to an isolated glucoamylase enzyme which has higher thermal stability than prior glucoamylases.  The patents also claim starch conversion processes using the enzyme.  Glucoamylases are used to convert hydrolyzed corn starch to glucose, particularly in production of ethanol.

Novozymes and C T E previously litigated these patents and settled the case in 2012.  According to C T E, the ‘084 and ‘468 Patents are invalid in light of the U.S. Supreme Court Myriad Genetics decision holding that isolated natural products are not patent eligible subject matter.

Superior Oil Company, Inc. v. Solenis Technologies L.P.

This is not a patent infringement suit, but rather a priority /ownership dispute in which Superior Oil claims that the inventors of its patent for a method for recovering oil from the byproducts of ethanol production using various surfactants were the first to invent the technology.

Superior Oil’s patent is U.S. Patent No. 8,962,059, entitled “Bio-based oil composition and method for producing the same” (‘059 Patent).  In its complaint, Superior Oil requests that the court declare that an interference-in-fact exists between the ‘059 Patent and U.S. Patent No. 8,841,469 (‘469 Patent), entitled “Chemical additives and use thereof in stillage processing operations” and owned by Solenis Technologies.

The complaint was filed February 24, 2015 in the U.S. District Court for the District of Delaware.

Hybrid Vehicles

Somaltus LLC v. Ford Motor Company

Somaltus filed this complaint for patent infringement in the U.S. District Court for the Eastern District of Texas on February 12, 2015.  Somaltus alleges that Ford infringes U.S. Patent No. 7,657,386 (‘386 Patent) by selling vehicles equipped with an infringing hybrid battery system.

The ‘386 Patent is entitled “Integrated battery service system” and directed to an integrated battery service system that performs a plurality of services related to a battery, such as battery testing, battery charging, and the like. In addition, the integrated service system provides services to devices/components that are coupled to the battery, such as starters, alternators, etc.

Somaltus, a non-practicing entity, has also sued Nissan, Bosch Automotive Service Solutions, Auto Meter Products, and Cadex Electronics.

LEDs

Cree, Inc. v. Feit Electric Company, Inc. et al.

North Carolina LED manufacturer Cree sued Feit for alleged infringement of ten utility and design patents relating to LED technologies.  The complaint also alleges that Feit has engaged in false advertising in connection with marketing its LED products.

The patents-in-suit are:

U.S. Patent No. 6,657,236, entitled “Enhanced light extraction in LEDs through the use of internal and external optical elements”

U.S. Patent No. 6,885,036, entitled “Scalable LED with improved current spreading structures”

U.S. Patent No. 6,614,056, entitled “Scalable led with improved current spreading structures”

U.S. Patent No. 7,312,474, entitled “Group III nitride based superlattice structures”

U.S. Patent No. 7,976,187, entitled “Uniform intensity LED lighting system”

U.S. Patent No. 8,766,298, entitled “Encapsulant profile for light emitting diodes”

U.S. Patent No. 8,596,819, entitled “Lighting device and method of lighting”

U.S. Patent No. 8,628,214, entitled “Lighting device and lighting method”

U.S. Design Patent No. D653,366, entitled “LED lamp”

U.S. Design Patent No. D660,990, entitled “LED lamp”

The complaint includes greenwashing allegations as well, specifically that Feit’s advertising falsely suggests that some of its LED products meet the Energy Star standard relating to Luminous Energy Distribution when the products actually fail to meet this requirement.

Smart Grid

Allure Energy, Inc. v. Honeywell International, Inc. 

On January 29, 2015, Allure Energy sued Honeywell in federal court in Austin, Texas, alleging false advertising and infringement of two patents relating to smart thermostat technology.

The complaint asserts U.S. Patent Nos. 8,626,344 and 8,457,797, both entitled “Energy management system and method” and directed to a wireless thermostat responsive to control action data communicated via a mobile app and other home energy management systems.

The accused device is Honeywell’s Lyric smart thermostat product.

Emerson Electric Co. et al. v. SIPCo LLC et al.

Previous posts (e.g., here and here) reported on SIPCo’s patent enforcement activities.

In this declaratory judgment (DJ) action, filed January 30, 2015 in federal court in Atlanta, Emerson, one of the defendants in SIPCo’s patent infringement suits, seeks a declaratory judgment that the claims of two SIPCo patents are invalid and not infringed.

The patents listed in Emerson’s complaint are U.S. Patent No. 6,044,062, entitled “Wireless network gateway and method for providing same,” and directed to certain wireless network systems having a server providing a gateway between two networks, and U.S. Patent No. 7,103,511, which relates to remote monitoring and control systems.

In 2013, Emerson filed a similar DJ suit against SIPCo targeting several patents.

Solar Power

Beacon Power, LLC v. SolarEdge Technologies, Inc. et al.

Beacon Power sued SolarEdge for patent infringement on January 9, 2015 in federal court in San Antonio, Texas.  The complaint asserts U.S. Patent Nos. 8,102,144 (‘144 Patent) and 8,669,675 (‘675 Patent), each entitled “Power converter for a solar panel.”

The ‘144 Patent is directed to a solar power generation system including a DC-to-DC power converter configured and arranged to convert the raw power output for each solar module to a high voltage and low current output.

The ‘675 Patent is directed to a solar power generation system wherein each DC-to-DC power converter is configured and arranged to convert the solar module output power (SOP) for each solar module to a converted solar module output power (COP) having a converted output voltage (COV) that is higher than the SOV and a converted output current (COI) that is lower than the SOI.

The accused products are SolarEdge’s P Series Power Optimizers.

Water Meters

Flow Dynamics, LLC v. Green4All Energy Solutions Inc. et al.

Filed February 20, 2015 in federal court in Palm Beach, Florida, Flow Dynamics’ complaint accuses Green4All of infringing U.S. Patent No. 8,707,981 (‘981 Patent).

The ‘981 Patent is entitled “System for increasing the efficiency of a water meter” and directed to a system and an associated valve assembly adapted to increase the efficiency of an upstream water meter. The valve assembly removes entrained water bubbles from the water supply, increasing the density of the water running through the water meter. This ensures that the water meter is not inaccurately including entrained air as metered water so water readings are more accurate.

Flow Dynamics alleges that Green4All’s H2minusO system infringes the ‘981 Patent.

A previous post discussed one significant piece of the massive patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo.  The most recent prior thread of this case – which resembles a yo-yo in its narrative – was an appellate court win for Butamax.

Initially, the district court ruled for Gevo, granting its motion for summary judgment of non-infringement under the doctrine of equivalents of two Butamax patents - U.S. Patent Nos. 7,993,889 (’889 Patent) and  7,851,188 (’188 Patent).  The district also denied both parties’ motions on literal infringement and reached split decisions on validity of the patents.

Butamax appealed, and the Court of Appeals for the Federal Circuit then vacated both the grant of Gevo’s motion for summary judgement of non-infringement and the denial of Butamax’s motion for summary judgment.

Gevo petitioned to the U.S. Supreme Court to hear the case, and in a single, swift decision known as a GVR, the Supremes granted the petition, vacated the Federal Circuit decision, and remanded for further proceedings.  Grant-Vacate-Remand, hence GVR (read a blurb on the decision and GVR at the Patently-O blog here).

The Federal Circuit must now reconsider this case in light of the Supreme Court’s recent , which raised the standard for appellate review of district court factual determinations in patent claim construction rulings.

Previously, the Court of Appeals for the Federal Circuit used a “de novo” standard, which meant it could take a fresh look at the evidence on claim construction and make its own determination, which led to a high reversal rate.  After Teva, the Federal Circuit can reverse only where it finds “clear error” in the district court’s consideration of the facts in a claim construction decision.

So the yo-yo, in this thread of the patent war at least, swings back to Gevo with Butamax’s victory wiped out for the moment (see Gevo’s patent PR on the GVR decision here).

In a number of prior posts (e.g., here, here and here), I discussed the series of patent infringement suits brought by GreenShift and its New York subsidiary, GS Cleantech (GS), against a host of ethanol producers across the midwestern United States.

The lawsuits involve GS’s patented ethanol production processes, described and claimed in a host of patents, principally the ‘858 Patent Family consisting of 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.

GS has been on an aggressive patent enforcement campaign over the last several years, and multiple actions were consolidated in the Southern District of Indiana, where the ‘858 Patent Family was construed and re-construed.

In a sweeping 233-page decision issued in October and made public last month, the court ruled on all of the pending motions for summary judgment brought by the original parties to the suit.

On plaintiff’s side, the motions brought by GS were for summary judgment of infringement of at least some claims of each patent in the ‘858 Patent Family by each of fourteen different defendants.

On the other side, the defendants of course moved for summary judgment of non-infringement of the ‘858 Patent Family.  The defendants also filed motions for summary judgment of invalidity of the ‘858 Patent Family (with GS cross-moving for summary judgment that the patents are valid).

Finally, GS alleged a subset of six defendants infringe U.S. Patent 8,168,037, entitled “Method and systems for enhancing oil recovery from ethanol production byproducts” (‘037 Patent).  The ‘037 Patent was also the subject of competing motions by both sides for summary judgment of infringement and non-infringement and/or invalidity.

The court made several rulings on infringement, all for defendants.  Here are a couple of highlights:

The court found the defendants entitled to summary judgment of non-infringement of a number of claims of the ‘858 Patent Family because the claims require drying the concentrate, which the court construed to mean drying the reduced oil syrup leaving the oil recovery process without mixing it with anything else first.  The defendants’s processes mix the reduced oil thin stillage concentrate before drying the mixture.

A number of defendants’ motions for summary judgment of non-infringement of several claims of the ‘516 Patent and ‘484 Patent were granted because the claims require that the reduced-oil syrup be “substantially free of oil” and defendants do not remove most of the oil from the incoming stream.

But the big news is the court held three of the four patents (‘858, ‘516 and ‘517) in the ‘858 Patent Family invalid because GS made a commercial offer to sell the technology more than a year before the August 17, 2004 filing date of the initial provisional patent application that led to the other applications in the family.

Under the patent law provisions in effect at that time, a sale of the invention or offer to sell the invention more than one year before filing a patent application directed to the invention invalidates a patent issuing on that application, so long as the invention was reduced to practice at the time of the offer.

The offer was in the form of a July 31, 2003 letter to a prospective customer which the court found was “the culmination of a commercial offer for sale”:

[T]he major elements of a contract for the sale of a system that could perform the the patented method are contained in the letter:  all items necessary to recover oil and the price.

All four patents of the ‘858 Patent Family were also held invalid as obvious over a prior Prevost patent in view of the common practice of the ethanol industry at the time:

Prevost discloses centrifugation of concentrated thin stillage to recover oil.  The only elements of the ‘858 patent family missing from Prevost’s explicit teachings are specific pH, moisture content and temperature range requirements that are indisputably encompassed by the standard operating conditions of a dry mill ethanol plant and the heating element recited in some of the claims.

If that weren’t enough, the court held the later-filed ‘037 Patent invalid as obvious in view of the ‘858 Patent and other prior art references.

At the end of the day, all of GS’s motions for summary judgment of infringement were denied, nearly all of its motions for summary judgment of validity of its patents were denied, none of the defendants was found to infringe GS’s patents, and the ‘858 Patent Family was found to be invalid on multiple grounds.

I’ve written before (e.g., here and here) about tech firms’ penchant for patent PR.  Here are several recent contributions to the genre.

Phytonix Corporation, based in North Carolina, touts its new U.S. patent for biobutanol production technology in this press release.  The patent is U.S. Patent No. 8,735,651, entitled “Designer organisms for photobiological butanol production from carbon dioxide and water” (‘651 Patent).

The ‘651 Patent is directed to a biosafety-guarded photobiological butanol production technology based on designer transgenic plants, designer algae, designer blue-green algae (cyanobacteria and oxychlorobacteria), or designer plant cells.

But the company’s IP portfolio doesn’t end here; Phytonix wants you to know that it also has IP relating to its biosafety guarded technology that “uses redundant mechanisms to prevent the proliferation of our organisms outside of a chemicals & biofuels productions environment.”

Query whether Phytonix directly competes with  biobutanol industry leaders Butamax and Gevo, who have been embroiled in contentious patent litigation.

Meanwhile, Ion Power Group (IPG) has been busy patenting not only in the U.S. but also in Canada, China, Japan and Russia.  The energy R&D company’s IP law firm announced that IPG’s “ground-breaking” ion power plant technology is the subject of “international patents.”

The press release does not contain the patent numbers, but specific patent info can be found on the company’s patents page.

New Jersey-based Proterro recently announced the grant of U.S. Patent No. 8,728,783, succinctly titled “Photobioreactor” (‘783 Patent).

The ‘783 Patent is directed to a photobioreactor for cultivating photosynthetic microorganisms comprising a non-gelatinous, solid cultivation support suitable for providing nutrients and moisture to photosynthetic microorganisms and a physical barrier covering at least a portion of the surface of the cultivation support.

The news was picked up by Biofuels Digest.  The press release also mentions a new Mexican patent and a prior U.S. patent covering the company’s sucrose-producing cyanobacteria.

Of course, not all green patent PR pertains to patent grants.  Some relates to tech transfer.  In this vein, Innovative Environmental Technologies (IET) recently announces an exclusive licensing agreement with Provectus Environmental Products.

IET said the deal involves seven patents, including U.S. Patent No. 7,828,974, with the positively prolix title “The induction of reducing conditions and stimulating anaerobic process through the addition of dried micro-blue green algae and seaweed to accomplish accelerated dechlorinization of soil and groundwater contaminated with chlorinated solvents and heavy metals” and U.S. Patent No. 8,147,694, entitled “Method for the treatment of ground water and soils using mixtures of seaweed and kelp.”

The press release can be found here.

By the way, this breakdown of green patent PR subject matter – the majority being directed to patent prosecution events – is consistent with my findings on patent PR in the clean tech industry discussed here.

A number of green patent complaints have been filed in the last several months in the areas of hybrid electric vehicles, ethanol production, LEDs, water treatment, and exhaust treatment catalysts.  This post covers new lawsuits filed from late 2013 to the end of March 2014.

Hybrid Electric Vehicles

Paice LLC v. Ford Motor Company

After major success asserting its patents against Toyota, the HEV development and licensing company Paice is at it again.  On February 19, 2014, Paice sued Ford Motor Company for patent infringement in federal court in Baltimore.

The rather lengthy complaint accuses Ford of infringing U.S. Patent Nos. 7,237,634, 7,104,347, 7,559,388, 8,214,097, and 7,455,134.  These patents are part of a large family tracing priority all the way back to 1999.  Each patent is entitled “Hybrid vehicles” and relates to hybrid vehicles and associated control systems.

In its complaint, Paice lays out the details of, among other things, its collaborative relationship with Ford and how it soured.  The accused products are Ford’s Fusion hybrid and plug-in hybrid, C-Max hybrid and plug-in hybrid, and Lincoln MKZ.

Biofuels (Ethanol Production)

GS Cleantech Corporation v. Pacific Ethanol Stockton LLC

GS Cleantech Corporation v. Pacific Ethanol Magic Valley, LLC et al.

GS recently initiated two new lawsuits involving its patented ethanol production processes.  A complaint filed March 17, 2014 in federal court in Sacramento, California accused Pacific Ethanol Stockton of infringing U.S. Patent No. 7,601,858, entitled “Method of processing ethanol byproducts and related subsystems” (’858 Patent).

The next day, GS sued Pacific Ethanol Magic Valley in the U.S. District Court for the District of Idaho.  The Idaho complaint asserted the ‘858 Patent as well as U.S. Patent Nos. 8,008,516 and8,283,484, each entitled “Method of processing ethanol byproducts and related subsystems,” and as 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.

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

LEDs

Luminus Devices, Inc. v. LED Engin, Inc.

Making its first green patent litigation appearance (to my knowledge), Massachusetts based Luminus Devices sued LED Engin in the U.S. District Court for the Northern District of California.

Filed back in November 2013, the complaint accuses LED Engin of infringing U.S. Patent No. 7,170,100 (‘100 Patent).  Entitled “Packaging designs for LEDs,” the ‘100 Patent is directed to an array of LEDs and an LED package.

The package includes a layer configured so that at least about 75% of the light that that emerges from the LED and impinges on the layer passes through the layer. The layer is disposed such that a distance between the surface of the LED and a surface of the layer nearest to the surface of the LED is from about five microns to about 400 microns.

The accused products are several LED emitters allegedly made and sold by LED Engin.

Lighting Science Group Corporation v. Cooper Lighting, LLC

On February 6, 2014 Florida LED lighting company Lighting Science Group (LSG) sued rival Cooper Lighting for patent infringement in federal court in Orlando.

The complaint alleges that Cooper infringes U.S. Patent No. 8,201,968 (‘968 Patent) by its manufacture and sale of the Halo LED Recessed White Surface Disk Light products.

Entitled “Low profile light,” the ’968 Patent is directed to a luminaire including a heat spreader and a heat sink disposed outboard of the heat spreader, an outer optic securely retained relative to the heat spreader and/or the heat sink, and an LED light source.

Water Treatment

Envirogen Technologies, Inc. v. Maxim Construction Corporation

Envirogen Technologies, a Texas company that makes water purification systems, recently filed a lawsuit for breach of contract and patent infringement against Maxim Construction.

Filed March 25, 2014 in the U.S. District Court for the Northern District of Illinois, the complaint lists three patents – U.S. Patent Nos. 7,309,436 (‘436 Patent), 6,878,286 (‘286 Patent) and 7,041,223 (‘223 Patent).

Entitled “High efficiency ion exchange system for removing contaminants from water,” the ‘286 and ‘223 Patents are related and are directed to a fixed bed ion exchange water purification system that combines features of single fixed bed ion exchange systems with those of a moving bed system.

The ‘436 Patent is entitled “Process for removing perchlorate ions from water streams” and directed to methods and systems for removing perchiorate from water.

According to the complaint, Maxim failed to make all payments under a contract to purchase an Envirogen water purification system, and therefore its use of the system is unlicensed and infringing.

Exhaust Treatment Catalysts

EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc.

EmeraChem Holdings, a Tennessee-based company that creates catalysts for gas and liquid fuels, sued Volkswagen in federal court in Knoxville, Tennessee on March 31, 2014.

The complaint asserts infringement of U.S. Patent Nos.:

 5,451,558, entitled “Process for the reaction and absorption of gaseous air pollutants, apparatus therefor and method of making the same”;

5,599,758, entitled “Reduction of absorbed nitrogen oxides by reaction with gas flow containing hydrogen and/or carbon monoxide”;

5,953,911, entitled “Regeneration of catalyst/absorber”;

6,037,307 , entitled “Catalyst/sorber for treating sulfur compound containing effluent”: and

7,951,346, entitled “Methods and systems for reducing particulate matter in a gaseous stream”.

According to the complaint, Volkswagen’s diesel powered vehicles equipped with exhaust treatment systems, NOx storage catalyst, and other exhaust treatment catalysts infringe one or more of the patents.

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.

There’s been another big twist in the biobutanol battle between BP-DuPont joint venture Butamax and Gevo, its arch rival in advanced biofuels.

A previous post discussed the district court’s ruling granting Gevo’s motion for summary judgment of non-infringement under the doctrine of equivalents of two Butamax patents - U.S. Patent Nos. 7,993,889 (’889 Patent) and  7,851,188 (’188 Patent).  The district also denied both parties’ motions on literal infringement and reached split decisions on validity of the patents.

Butamax appealed, and the Court of Appeals for the Federal Circuit recently vacated both the grant of Gevo’s motion for summary judgement of non-infringement and the denial of Butamax’s motion for summary judgment.

The ’889 and ’188 Patents are both entitled “Fermentive production of four carbon alcohols” and directed to a more cost efficient method of producing isobutanol directly from pyruvate via a particular production pathway using recombinant microbial host cells.

The patented processes use an enzyme called KARI, which needs a cofactor that donates electrons to enable it to catalyze a reaction.  Based on statements in the patents, the district court had interpreted the claims to require a KARI defined with respect to the NADPH cofactor only.

The crux of the Federal’s Circuit’s decision was its holding that the district court erred in its claim construction, specifically concluding that the lower court got it wrong when it interpreted the claim term “acetohydroxy acid isomeroreductase”, i.e., KARI, to mean an enzyme that is solely NADPH dependent.

The Federal Circuit found that the plain meaning of the term KARI does not in itself impose any limitation on the cofactor or the source of electrons needed for the reaction.

In addition, the appeals court found that nothing in the patents limited the definition of KARI to being only NADPH dependent:

The patent’s definition at least excludes as-yet-undiscovered KARI enzymes that could catalyze conversion of AL to DHIV without using NADPH at all.  Moreover, the description of specific types of KARI as NADPH-dependent does not clearly express an intent to redefine all KARI “using NADPH” as KARI that must be NADPH-dependent.

Ultimately, the Federal Circuit made its own determination on claim construction, defining “acetohydroxy acid isomeroreductase” by its enzyme classification number and catalytic activity:

[T]he term “acetohydroxy acid reductisomerase” is construed as “an enzyme, whether naturally occurring or otherwise, known by the EC number 1.1.1.86 that catalyzes the conversion of acetolactate to 2,3-dihydroxyisovalerate.”

Therefore, the appeals court vacated the denial of Butamax’s motion for summary judgment of infringement because the lower court now has to consider the question of whether Gevo’s enzymes infringe the patents-in-suit under the broader claim construction.

Interestingly, this case previously went up to the Federal Circuit on appeal of a preliminary injunction decision, and the appeals court at the time warned the district court to reconsider its claim construction of the disputed term.

As to validity of the Butamax patents, the Federal Circuit reviewed the record and found sufficient evidence – in the form of expert testimony and scientific publications – to create a genuine issue of fact that the ‘889 Patent meets the written description requirement because those of skill in the art know how to deactivate the genes that express the claimed pathway.

So the case will go back down to the district court for another round on infringement and validity.