Green Patent Infringement Update

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There have been some recent developments in the green patent infringement suits we’ve been covering.

First, in Neste Oil v. Dynamic Fuels, Syntroleum and Tyson Foods (see previous post here) the U.S. District Court for the District of Delaware granted defendant Syntroleum’s motion to stay the litigation pending reexamination of the asserted patent by the U.S. Patent and Trademark Office (PTO).

The patent-in-suit is U.S. Patent No. 8,187,344 (’344 Patent), entitled “Fuel composition for a diesel engine” and directed to diesel fuels made from animal, plant, or fish fatty acids.

The court acknowledged that delayed resolution of the case under reexam could prejudice Neste. However, ultimately the court found the likelihood of simplifying the issues for litigation and the early stage of the court proceedings weighed in favor of a stay:

[T]here is reason to believe that the PTO’s reexamination will result in the cancellation of at least some of the claims. To the extent that such cancellation does occur…the litigation necessarily will be simplified.

The present case is in its earliest stages –”the reexamination request was filed prior to any scheduling order being in place, less than three months after litigation began, and before Defendants’ answers were due, and where the parties have incurred little, if any, resources with respect to scheduling, discovery disputes, or motion practice.”

One important consideration was the fact that a related Neste patent – U.S. Patent No. 7,279,018 – had all of its claims canceled in a prior PTO reexamination.

In Solannex v. Miasole, the U.S. District Court for the Northern District of California consolidated two separate infringement actions involving solar cell interconnection structures (see previous posts here and here).

The cases involve four patents:

U.S. Patent No. 7,635,810, entitled “Substrate and collector grid structures for integrated photovoltaic arrays and process of manufacturing such arrays” (’810 Patent);

U.S. Patent No. 7,868,249, entitled “Substrate and collector grid structures for integrated series connected photovoltaic arrays and process of manufacture of such arrays” (’249 Patent);

U.S. Patent No. 8,076,568, entitled “Collector grid and interconnect structures for photovoltaic array and modules” (’568 Patent); and

U.S. Patent No. 8,110,737, entitled “Collector grid electrode structures and interconnect structures for photovoltaic arrays and methods of manufacture” (’737 Patent).

The court denied the parties’ motion under Federal Rule 54(b) to certify for appeal a stipulated judgment of non-infringement of the ’810 and ’249 Patents. Because claim construction has not yet occurred for the ’568 and ’737 Patents, the court held it was premature for appeal of the rulings on the ’810 and ’249 Patents:

Claim construction for the ’568 and ’737 patents has not yet taken place. If the court were to certify the claim construction of the ’810 and ’249 patents, it is likely that the parties would appeal claim construction of the same terms at a later date, requiring the appellate court to decide the same issues – or at least similar – more than once. Because this is exactly the type of piecemeal appeal Rule 54(b) was designed to prevent, the parties joint request for entry of judgment and certification must be denied.

Eric Lane is a patent attorney at McKenna Long & Aldridge LLP in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at elane@mckennalong.com

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Walter’s contributions to CleanTechies over the past 4 years have been instrumental in growing the publications social media channels via his ongoing editorial and data driven strategies. He is the founder and managing director of Sunflower Tax, a renewable energy tax and finance consultancy based in San Diego, California. Active in the San Diego clean technology community, participating in events sponsored by CleanTech San Diego, EcoTopics, and Cleantech Open San Diego, Walter has also been a presenter at numerous California Center for Sustainability (CCSE) programs. He currently serves as an adjunct professor at the University of San Diego School of Law where he teaches a course on energy taxation and policy.

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