Author

Eric Lane

Eric Lane is a patent and trademark attorney and the Principal at Green Patent Law in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at (619) 818-6043 and at elane@greenpatentlaw.com.

Cleantech in Court: Green Patent Complaint Update

written by Eric Lane

Several new green patent lawsuits were filed in the last couple of months in the areas of LEDs, smart grid technologies, concentrated solar power, solar inverters, green dry cleaning solvents, and water treatment.

LEDs

Cree, Inc. v. Harvatek Corporation et al.

North Carolina LED maker Cree filed a couple of patent infringement suits in September and October. In the first, Cree sued Harvatek for alleged infringement of six patents relating to white light LED technology. The complaint was filed September 15, 2014 in the U.S. District Court for the Western District of Wisconsin.

Three of the asserted patents are of a first patent family and share the same title. Another two are part of a second family and share a title. The patents-in-suit are as follows:

U.S. Patent No. 6,600,175, entitled “Solid state white light emitter and display using same”

U.S. Patent No. 7,943,945, entitled “Solid state white light emitter and display using same”

U.S. Patent No. 8,659,034, entitled “Solid state white light emitter and display using same” (’034 Patent)

U.S. Patent No. 7,910,938, entitled “Encapsulant profile for light emitting diodes” (’938 Patent)

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

U.S. Patent No. 8,362,605, entitled “Apparatus and method for use in mounting electronic elements”

The complaint alleges that a number of Harvatek’s white LED products infringe the patents.

Cree, Inc. v. Honeywell International Inc.

The second suit accuses Honeywell of infringing the ’034, ’938, and ’298 Patents as well as U.S. Patent No. 8,860,058, entitled “Solid state white light emitter and display using same.”

Filed in the Western District of Wisconsin on October 28, 2014, the complaint alleges that Honeywell’s Automation and Control Systems and Aerospace business units are selling infringing products using Cree’s patent white LED technology for backlighting.

The accused products include liquid crystal display devices in Honeywell’s Aviation Lighting and Cockpit Displays, Environment & Combustion Controls, Scanning and Mobility devices, and Measurement and Control Systems as well as certain programmable thermostat products.

Smart Grid

Endeavor MeshTech, Inc. v. EnergyHub, Inc.

On October 14, 2014, Endeavor MeshTech (a wholly-owned subsidiary of patent monetization firm Endeavor IP) filed a patent infringement complaint against Brooklyn-based EnergyHub in the U.S. District Court for the Southern District of New York.

The complaint (Endeavor complaint part_1; Endeavor complaint part_2) accuses EnergyHub of infringing three patents in a family – U.S. Patent Nos. 7,379,981, 8,700,749, and 8,855,019, each entitled “Wireless communication enabled meter and network.” The patents-in-suit relate to a self-configuring wireless network including a number vnodes and VGATES.

According to the complaint, EnergyHub’s self-configuring wireless network marketed and sold under the name of its Mercury platform infringe the patents.

Concentrated Solar Power

Schott Solar CSP GmbH v. SkyFuel, Inc. et al.

Schott filed suit against SkyFuel and Weihai Golden Solar October 23, 2014 in the U.S. District Court for the District of Colorado. The complaint alleges infringement of U.S. Patent No. 7,013,887 (’887 Patent) relating to solar absorption receivers used in certain concentrated solar power (CSP) applications.

Entitled “Absorber pipe for solar heating applications,” the ’887 Patent is directed to an absorber pipe having a central metal pipe, a sleeve tube, folding bellows, and an expansion compensation device that connects the metal pipe and sleeve tube so that they can slide relative to each other.

According to the complaint, the defendants sell infringing receivers and/or build and install CSP plants incorporating infringing receivers.

Solar Inverters

Enphase Energy, Inc. v. SolarBridge Technologies, Inc.

Inverter maker Enphase Energy sued SolarBridge, alleging infringement of three patents relating to solar inverter technology. The complaint was filed October 10, 2014 in the U.S. District Court for the Northern District of California.

The asserted patents are U.S. Patent Nos. 7,768,155 and 8,035,257, both entitled “Method and apparatus for improved burst mode during power conversion” and U.S. Patent No. 7,986,122, entitled “Method and apparatus for power conversion with maximum power point tracking and burst mode capability.”

The patents relate to systems and methods for converting DC power generated by solar panels to AC power for the electric grid and includes methodology for storing energy and drawing energy during burst periods and controlling burst modes to improve efficiency in low sunlight conditions.

The accused products are SolarBridge’s Pantheon microinverter and TrueAC module.

Green Dry Cleaning Solvents

GreenEarth Cleaning, L.L.C. v. Glyndon Laundry, Inc. d/b/a Glyndon Lord Baltimore Cleaners

Filed September 22, 2014 in U.S. District Court for the Western District of Missouri, GreenEarth’s complaint accuses Glyndon of, among other things, patent and trademark infringement.

GreenEarth alleges that Glyndon is infringing its “base” patent – U.S. Patent No. 5,942,007 (’007 Patent) – as well as nine other patents which are “variations” of the ’007 Patent. The ’007 Patent is entitled “Dry cleaning method and solvent” and directed to methods of dry cleaning clothes using a cleaning fluid including a cyclic siloxane composition.

GreenEarth also accuses Glyndon of infringing its trademarks including its leaf and water droplet logo:

According to the complaint, GreenEarth licensed its trademarks and patented processes to Glyndon, but Glyndon stopped paying the requisite fees after August 2013 and continued to use the licensed intellectual property.

Water Treatment

Deerpoint Group, Inc. v. Acqua Concepts, Inc. (DBA Ag Water Chemical of California)

Deerpoint, a provider of water treatment solutions for the agriculture industry, sued Acqua and two former Deerpoint employees in federal court in Fresno, California.

Filed September 25, 2014, the complaint accuses Acqua of infringing U.S. Patent Nos. 6,238,573 (’573 Patent) and 7,638,064 (’064 Patent) and alleges that its former employees misappropriated trade secrets including confidential products and services, client lists, and pricing information.

The ’573 Patent is entitled “Water treatment” and directed to a process for producing chlorine for water treatment including blending calcium hypochlorite and water to form a saturated solution of calcium hypochlorite and a sink of calcium hypochlorite and feeding chlorinated water to a water supply.

The ’064 Patent is verbosely titled “Continuously feeding chlorine to the irrigation system, monitoring an outer field point to determine whether at least a detectable level of residual chlorine is seen at that point, whereby chlorination disinfection system-wide is achieved.”

November 21, 2014 0 comment

GE Settles Signage LED Patent Suit; Offers Patents for License

written by Eric Lane

One of the major green patent lawsuits I’ve been following in this space – GE Lighting v. Agilight – has settled. GE announced the settlement in a recent press release.

The suit involved four GE LED patents, some relating to use of LED modules for signage applications: U.S. Patent Nos. 7,160,140 (’140 Patent) and 7,832,896 (’896 Patent), entitled “LED String Light Engine,” U.S. Patent No. 7,520,771 entitled “LED String Light Engine and Devices that are Illuminated by the String Light Engine” (’771 Patent), and U.S. Patent No. 7,633,055 entitled “Sealed Light Emitting Diode Assemblies Including Annular Gaskets and Method of Making Same” (’055 Patent).

GE filed the suit against AgiLight back in February 2012 in the U.S. District Court for the Northern District of Ohio. After the district court issued a claim construction ruling favorable to AgiLight, GE joined in a stipulation that two of the ’140 and ’771 Patents were not infringed to expedite appeal of the claim construction decision.

Shortly thereafter, the district court granted AgiLight’s motion for summary judgment on the remaining claims of the ’055 Patent) and the ’896 Patent.

The terms of the settlement are confidential, but according to the press release the litigation was resolved “to the parties’ mutual satisfaction.”

If the terms included AgiLight taking a license to the patents, it was non-exclusive: GE Lighting’s General Manager – Global Product Management Jerry Duffy said the company is “offering non-exclusive licenses under these patents to interested parties.”

November 14, 2014 0 comment

In Eco-mark Examination USPTO Getting into Anti-Greenwashing

written by Eric Lane

A recent article in the the New York Law Journal caught my attention for an interesting development in examination of eco-mark applications in the U.S. Patent and Trademark Office (USPTO). We’ve known for some time that marks containing terms such as “green,” “clean,” “eco-” or “enviro-” are very likely to be rejected as merely descriptive of environmentally friendly products or services.

In “Changing Climate for ‘Green’ Trademarks,” Robert Scheinfeld of the Baker Botts firm notes that the USPTO has very recently begun to reject eco-marks on the basis of deceptiveness.

This is almost the opposite of a descriptiveness rejection: where a descriptive eco-mark immediately communicates to consumers the environmentally friendly nature of the goods or services, a deceptive eco-mark is one that signals environmentally friendly characteristics while the goods or services do not actually confer an environmental benefit.

The piece cites a 2013 decision by the USPTO Trademark Trial and Appeal Board (Board) as a case in point. In re Kitaru Innovations Inc. involved an application to register the mark GREEN SEAL (shown above) for adhesive tape and tape dispensers.

The USPTO examining attorney refused registration on the ground that the mark was deceptively misdescriptive under Section 2(e)(1) of the Lanham Act and comprises deceptive matter under Section 2(a) in that it falsely and materially indicates that the applicant’s goods are environmentally friendly when, in fact, they are not. The Board affirmed the refusal.

For deceptive misdescriptiveness under Section 2(e)(1), the Board’s starting point, by now a very familiar one, was that the word “‘green’ directly conveys information to potential consumers that the tape products are environmentally friendly.”

To be misdescriptive, a mark must be merely descriptive of a significant aspect of the goods which they could plausibly possess but in fact do not. The Board concluded that the GREEN SEAL mark could be merely descriptive if the products were, indeed, green:

The two word composite term, “Green Seal,” would be merely descriptive if applicant’s goods were made of eco-friendly materials. Green would convey information about the environmental claims that the tape possessed, and a most important feature of adhesive tape or adhesive packaging tape is that it “seals,” or “tightly or completely closes or secures a thing.”

Interestingly, but immaterial to the Board’s decision, the applicant made no claim that its products are eco-friendly. Rather, the “Green Seal” mark is just one in a line of color-coded adhesive tape products that also includes “Black Seal,” “Blue Seal” and “Double Blue Seal.”

Nevertheless, the Board concluded that many of the affected consumers would be likely to believe that the term “Green” in the GREEN SEAL mark describes the adhesive tapes as being environmentally friendly. The Board noted evidence of record showing that adhesive tape products in particular are increasingly the subject of environmentally friendly claims, and consumers would expect the applicant’s tape to be eco-friendly:

As seen above in the pages of blogs and advertisements from the Internet, an increasingly common feature of adhesive and packaging tape is that it is ecologically sound. Sometimes the focus is on how the tape deteriorates over time, and others times it has to do with the use of recycled materials. The term “Green” is frequently used to capture this idea. Accordingly, consumers encountering applicant’s mark with the term “Green” will likely understand the term in context to refer to the fact that this tape is an environmentally-friendly product.

To be deceptive matter under Section 2(a), the misdescription must be likely to affect the relevant consumers’ decision to purchase the products. Here, the Board noted the “urgency” for consumers to recycle and purchase products made of recycled or biodegradable materials. The evidence of record showed that there is a segment of purchasers that would be more inclined to buy eco-friendly adhesive tape products.

Accordingly, the Board concluded that the perceived green quality of the tape products would be likely to affect the purchasing decisions of relevant consumers:

The level of excitement on the part of consumers reflected above over the availability of environmentally friendly / green tape products demonstrates that this characteristic would be material to the decision of consumers to purchase applicant’s goods. Accordingly, we find on this record that such a misdescription is likely to affect the decision to purchase the goods, and the third and final prong of the Section 2(a) deceptiveness test has also been satisfied.

This is the first decision I’ve seen where an eco-mark was refused registration by the USPTO for being deceptively misdescriptive and/or deceptive matter. It’s unclear whether or not this is actually a trend. I plan to conduct some research on this topic and discuss my findings in this space.

What is clear, though, is that the USPTO has made an initial foray into the subject of greenwashing and has at least begun to use deceptive misdescriptiveness and deceptive matter as tools for combating the problem.

October 28, 2014 0 comment

Pressing Matters: Inserting Indow Windows for Energy Efficiency

written by Eric Lane

Indow Windows (Indow) is a Portland, Oregon, company that has developed energy efficient window inserts.

Indow owns at least one U.S. Patent and a pending patent application covering its storm window technology. U.S. Patent No. 8,272,178 (’178 Patent) is entitled “Press-fit storm window” and directed to a storm window assembly comprising a transparent panel and tubes or gaskets for insertion into a window frame.

The tube (102) has a hollow interior and a channel groove that connects it to the panel (130). The tube allows a pressure fit (350, 352, 354) into a window frame.

FIGS. 6(A)-6(C) show a molded tube corner piece which includes parallel plates (605, 615) with a gap (617). Notch (643) facilitates better coverage and flexibility while find (641) provides improved adhesion and insulation.

FIG. 5 shows the corner piece being inserted into a window frame.

U.S. Patent Application Publication No. 2014/0174006 is a related application (continuation-in-part of a continuation-in-part) owned by Indow, which adds some new material to the original disclosure of the ’178 Patent.

According to the ’178 Patent, the invention is intended to supplement, rather than replace, existing windows:

The windows are not designed to replace existing windows, but rather to supplement them by creating a tight seal between the interior space or exterior space and the existing window.

The invention accomplishes this by creating outward pressure around the edge of the panel:

In one embodiment of the inventive press-fit storm window, a transparent panel of acrylic glass, such as PLEXIGLAS, glass, or other clear rigid material is held in place by the spring action created by a continuous (or partial, conceivably) round gasket (or other spring-like gasket), that creates outward pressure around the entire exterior edge of the clear panel (or the top, left, and right sides). The panel is held securely in place through a combination of this outward pressure and friction.

A press release emailed to me by the company notes that its compression tube requires no mounting hardware or track system. Significantly, the press release cites a U.S. Department of Energy study which found that installation of Indow Windows in a home in Seattle “led to a more than 20 percent reduction in heating, ventilating and air-conditioning use.”

The windows have gotten some recognition – according to the press release it has won a number of awards including the 2014 Top Product of the Year Award in the Environmental Leader Product & Project Awards.

October 20, 2014 1 comment

Burning Ring of Fire: Greenwashing Case Alleging Fried Solar Panels to Move Forward

written by Eric Lane

In February, three individuals filed a proposed class action lawsuit against BP Solar and Home Depot accusing the solar panel maker and retailer of greenwashing in connection with certain solar panels (see the complaint here).

Plaintiffs Michael Allagas, Arthur Ray, and Brett Mohrman alleged that there is a latent defect in the junction box of the BP solar panels that causes the box to fail and results in a total loss of functionality of the solar panels.

Specifically, the plaintiffs allege that the defect in the junction box and solder joints between connecting cables makes the solder joint overheat, which causes electrical arcing that generates temperatures of 2000-3000 degrees. According to the plaintiffs, the heat melts the junction box, burns the cables and solar panels, and shatters the glass cover of the panels.

The plaintiffs also alleged that BP’s advertising and marketing materials about the solar panels are false or misleading.

While the northern California federal court hearing the case previously dismissed some of the plaintiffs’ claims, a recent decision denied BP and Home Depot’s motion to dismiss the remaining claims.

The court found the pleadings sufficient to support plaintiffs’ express warranty claims for breach of the express defect and power warranties because they stated that a latent defect existed at the time the product was sold and that they relied upon BP Solar’s power warranty in purchasing the solar panels.

Similarly, the implied warranty claims were held to be sufficient because plaintiffs clearly alleged a latent defect in the solar panels that renders them unmerchantable and unfit for their intended use.

With respect to the advertising and marketing materials, the plaintiffs cited various sweeping representations made by BP Solar, including:

Promises that the solar panels will “drastically reduce or eliminate your electric bills . . . forever,” and will “increase the value of your home.”

A statement that “No other system can operate at a higher level of safety than those offered by BP Solar.”

BP Solar also made some specific representations about the output and life of the solar panels, including product data sheets warranting 80% power output for a 25-year period and a 90% power output for a 12-year period with a 5-year warranty of materials and workmanship.

The court held that plaintiffs’ claims under the Consumer Legal Remedies Act could go forward because the statements include “factual representations” that could be “likely to deceive a reasonable consumer.” The court concluded:

A reasonable consumer could have relied on these statements as descriptions of the quality and power capabilities of the solar panels.

The court maintained the plaintiffs’ fraud claims because they allege that BP knew of and concealed the defect:

The amended complaint also alleges BP’s knowledge of the latent defect in the solar panels, BP’s concealment of the defect, particular instances when information regarding the defect and risk of fire could have been revealed, and the warranties all three plaintiffs relied upon that failed to include the concealed information.

The court also denied the defendants’ motion to strike the class allegations, but left the door open for BP and Home Depot to contest those upon a subsequent motion by the plaintiffs for class certification.

October 7, 2014 0 comment

It’s No Use: Why Chevy’s BOLT Trademark Isn’t (Necessarily) a New Brand

written by Eric Lane

There is some curious eco-mark news to report: apparently, last month General Motors filed two notable U.S. trademark applications, one for BOLT and the other for CHEVROLET BOLT.

They are Application Nos. 86357513 and 86357523 (BOLT Applications), respectively, and list the goods as “motor land vehicles, namely, automobiles.”

The clean tech and electric vehicle blogosphere was buzzing with speculation as to what this new brand means. Is GM planning to offer additional EVs, perhaps a new low-cost Chevy Volt, a short-range performance vehicle, or a cool new concept car? Maybe different battery sizes?

One clue is that the BOLT applications’ goods listing is much broader than the goods in GM’s prior CHEVROLET VOLT trademark registration, which identified “extended range electric automobiles.” So, contrasted with the VOLT, the BOLT trademark could cover any type of automobile, electric or otherwise.

For now, though, the clean tech blogs had to conclude there is no indication that GM intends to use this new trademark. Inside EVs proposed that GM might be trying to protect itself from a Chinese ripoff called Bolt.

Gas 2.0 carried this non-use preemptive motive further, noting that:

Car companies are constantly taking out trademarks for names they have no intention of using; it’s just a matter of making sure nobody else uses it either.

While car companies may try to keep potential brand names away from their competitors, there are strict legal limits on the ability to protect a trademark that is not in use.

To fully understand this and to put the BOLT Applications in context, we need a bit more information about the U.S. trademark system.

A U.S. trademark application must have one or more legal bases, i.e., a situation (basis) defined by the federal trademark law, to support the filing. The available filing bases are (1) actual use of the mark in interstate commerce, (2) a bona fide intent-to-use the mark in interstate commerce, (3) a foreign trademark application for the same mark and the same goods or services, (4) a foreign registration for the same mark and the same goods or services, and/or (5) extension of an international registration for the same mark and the same goods or services. By far the most common filing bases are the first two.

In the United States, trademark rights flow from, and are contingent upon, use of the mark. Although an applicant can keep a U.S. trademark application pending for about two and a half years based only on the stated intent to use the mark, the U.S. Patent and Trademark Office (USPTO) will not register a trademark in a use-based or intent-to-use application absent proof of use in interstate commerce and there is no enforceable trademark right, even at common law, without use of the mark.

More particularly, to obtain a registration of a use-based or an intent-to-use application, the applicant must prove use of the mark for the goods and/or services listed in the application by submitting a specimen showing such use.

If based on a foreign trademark application or registration or an international registration, however, the applicant does not need to use the mark in the United States to obtain a U.S. registration. The USPTO will register the trademark upon proof that the applicant obtained a foreign registration.

Interestingly, the United States is one of only a handful of countries that require use to register a trademark and have an enforceable right in the mark. Most countries do not require use of the mark to obtain a registration.

So filing a U.S. trademark application based on a foreign or international registration gets around the use requirement (in the United States and potentially anywhere in the world), at least or the purpose of obtaining a U.S. trademark registration.

But that’s not the end of the story. The owner of a U.S. trademark registration registered solely on the basis of a foreign or international registration (i.e., without use in the United States) cannot enforce its trademark in a U.S. court. While some U.S. courts have held that such registrants have standing to sue, even in those courts, the registration would be canceled without use in interstate commerce.

So while a foreign trademark registration can get you a U.S. registration without use in the United States, you probably can’t stop other U.S. users of the mark because your registration would be unenforceable and would not stand up in court.

Now back to GM’s BOLT applications. This is where it gets interesting. The applications are not based on use of the marks in the United States or an intent to use in the United States. Rather, each application is based on a foreign application filing, specifically Brazilian trademark application number 907703178 for CHEVROLET BOLT and 907703070 for BOLT.

Brazil is one of those countries that does not require use to obtain a trademark registration. So GM could get itself U.S. trademark registrations, albeit unenforceable ones, for BOLT and CHEVROLET BOLT without ever using this exciting new brand anywhere in the world.

Even though GM’s U.S. registrations may be unenforceable “paper” registrations, Gas 2.0′s point still has some merit. Ownership of U.S. trademark registrations for the BOLT marks could still scare off potential users and keep competitors at bay for a while.

Don’t be surprised, though, to not see a shiny new Chevy Bolt speeding by you on the highway.

October 2, 2014 0 comment

Cleantech in Court: Green Patent Complaint Update

written by Eric Lane

As with many things, July and August were slow months for green patent litigation. However, a handful of green patent complaints were filed in the last two months in the areas of solar power, green chemicals, smart meters, and, of course, LEDs.

Solar Power

Conlin v. Solarcraft, Inc.

Kevin L. Conlin sued Solarcraft on July 2, 2014 in federal court in Houston, Texas. The complaint alleges that several patents relating to portable solar power units are invalid or unenforceable due to inequitable conduct. Conlin further alleges that he should have been named as an inventor on the patents.

The patents-in-suit are:

U.S. Patent No. 7,832,253, entitled “Portable weather resistant gas chromatograph system”

U.S. Patent No. 7,843,163, entitled “Portable weather resistant enclosure”

U.S. Patent No. 7,750,502, entitled “Portable weather resistant flow meter system”

U.S. Patent No. 7,795,837, entitled “Portable solar power supply trailer with a security containment area and multiple power interfaces”

U.S. Patent No. 7,880,333, entitled “Method for weather resistant portable flow metering”

E. I. du Pont de Nemours and Co. v. SunEdison, Inc.

A previous post discussed du Pont’s solar paste patent litigation with Heraeus and another post detailed the parties’ subsequent legal wrangling over a press release and customer letters du Pont wrote about the litigation.

Armed with a new solar paste patent, du Pont has sued SunEdison. Filed August 21, 2014 in the U.S. District Court for the District of Delaware, Du Pont’s complaint accuses SunEdison of infringing U.S. Patent No. 8,497,420 (’420 Patent).

The ’420 Patent is entitled “Thick-film pastes containing lead- and tellurium-oxides, and their use in the manufacture of semiconductor devices” an directed to a thick-film paste for printing the front-side of a solar cell having one or more insulating layers. The thick-film paste comprises an electrically conductive metal and a lead-tellurium-oxide dispersed in an organic medium.

Green Chemicals

Koch Agronomic Services, LLC v. Eco Agro Resources, LLC

In this lawsuit over a treatment agent for fertilizer, Koch accuses Eco Agro of infringing U.S. Patent No. 5,698,003 (’003 Patent). The complaint was filed in the U.S. District Court for the Middle District of North Carolina on August 13, 2014.

The ’003 Patent is entitled “Formulation for fertilizer additive concentrate” and directed to solvent systems for the formulation of certain urease inhibitors. These formulations enable the preparation of stable concentrated solutions for storage, transportation, and impregnation onto solid urea fertilizers and incorporation into liquid urea fertilizers.

According to the complaint, Eco Agro’s N-YIELD product, an environmentally-friendly urease inhibitor used to treat urea-based fertilizers, infringes the ’003 Patent.

Smart Meters

Sensor-Tech Innovations LLC v. CenterPoint Energy Houston Electric, LLC

On July 16, 2014 Sensor-Tech sued CenterPoint for patent infringement in federal court in Marshall, Texas. According to the complaint, CenterPoint’s Advanced Metering System infringes U.S. Patent No. 6,505,086 (’086 Patent).

Entitled “XML sensor system,” the ’086 Patent is directed to a sensor communication system comprising an array of sensors adapted to transmit sensor data in XML format.

LEDs

Koninklijke Philips N.V. et al. v. JST Performance, Inc.

Philips has asserted eleven LED patents against JST in an infringement action filed July 23, 2014 in federal court in Orlando, Florida.

According to the complaint, the patents are infringed by JST products in the A-Series, D-Series, E-Series, SR-Series, SR-M, SR-Q, RDS Series, Q-Series, and Wake Flame product lines, and LED products used in LED Lighting Devices such as dome lights, deck lights, driving lights, fog lights, light bars, spotlights, floodlights, diffused lights, and marine lighting products.

The asserted patents are:

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

U.S. Patent No. 6,561,690, entitled “Luminaire based on the light emission of light-emitting diodes”

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. 6,967,448, entitled “Methods and apparatus for controlling illumination”

U.S. Patent No. 7,030,572, entitled “Lighting arrangement”

U.S. Patent No. 7,262,559, entitled “LEDS driver”

U.S. Patent No. 7,348,604, entitled “Light-emitting module”

U.S. Patent No. 7,566,155, entitled “LED light system”

Seoul Semiconductor Co. v. Curtis International Ltd.

Filed July 22, 2014 in the U.S. District Court for the Southern District of Florida, Seoul’s 7-patent complaint accuses Curtis’s LED televisions sold under the Proscan brand name of infringement.

The following patents are listed in the complaint:

U.S. Patent No. 8,314,440, entitled “Light emitting diode chip and method of fabricating the same”

U.S. Patent No. 7,964,943, entitled “Light emitting device”

U.S. Patent No. 7,626,209, entitled “Light emitting diode having active region of multi quantum well structure”

U.S. Patent No. 7,572,653, entitled “Method of fabricating light emitting diode”

U.S. Patent No. 6,942,731, entitled “Method for improving the efficiency of epitaxially produced quantum dot semiconductor components”

U.S. Patent No. 6,473,554, entitled “Lighting apparatus having low profile”

U.S. Patent No. 6,007,209, entitled “Light source for backlighting”

September 15, 2014 0 comment

From Burgers to Biofuels: Trademark Board Rules McDonald’s “Mc” Rights Extend to Biodiesel

written by Eric Lane

In March of 2009 Joel Joseph filed a U.S. trademark application for the mark BioMcDiesel for use in connection with marketing and selling biodiesel fuel.

Needless to say, the owner of the ubiquitous global McBrand was not pleased. McDonald’s Corporation filed an opposition proceeding before the the U.S. Patent and Trademark Office Trademark Trial and Appeal Board (Board) requesting that the application be denied registration.

In a recent decision, the Board ruled for McDonald’s and held that the application would be refused registration.

As usual, the Board’s focus was on the likelihood of confusion inquiry, specifically here whether Joseph’s use of the BioMcDiesel mark would cause consumer confusion with the McDonald’s family of “MC” formative marks.

Although McDonald’s has been criticized over the years for trademark bullying and overextending the reach of its brand (e.g., the McSleep case), its argument here was a credible one.

The first likelihood of confusion factor was easy: fame of the McDonald’s marks (a no-brainer). However, the key factor that drove the Board’s decision was the similarity of the goods/services.

It turns out that McDonald’s is one of the largest suppliers of “yellow grease,” the industry term for fryer grease, for biodiesel production. The evidence of record included multiple news articles about its biodiesel program, including one entitled “McDonald’s McDiesel” Go Green Hawaii.” McDonald’s also promotes its sustainability programs, including its recycling efforts, which have received considerable media attention.

The Board also noted that McDonald’s has been sharing locations with gas service stations since 1993, biodiesel fuel is sold at some of these restaurant and gas station locations, and McDonald’s uses biodiesel to run its delivery trucks (see picture above).

Thus, the Board concluded that consumers would likely be confused by Joseph’s use of the BioMcDiesel mark for biodiesel fuel:

[The evidence of record] is sufficient to show that there is a relationship between gas stations and food service/restaurants, and particularly between Opposer’s restaurants, the food items served in those restaurants, and its yellow grease, and fuel, such that relevant consumers, when confronted with the use of Applicant’s BioMcDiesel mark for biodiesel fuel, would be likely to believe there is an association as to source between that biodiesel fuel and Opposer’s restaurant services and related food products.

As to the similarity of the mark to the McDonald’s family of marks, the Board was not persuaded by Joseph’s arguments that the location of the “Mc” component in the middle of the mark and the fact that biodiesel is not a food product were sufficient to distinguish it.

The Board noted that the McDonald’s family is not limited to marks in which the “Mc” formative is at the beginning of the mark, citing CHICKEN MCNUGGETS, EGG MCMUFFIN, and SAUSAGE MCMUFFIN. Also, because the McDonald’s marks are so famous, “when third parties use the “Mc” formative, it engenders a similar commercial impression.”

You should think twice before pouring your resources into those McSolar and McWind brands!

August 8, 2014 0 comment

Six Years On, IP Impact on Green Tech Transfer Remains a Mystery

written by Eric Lane

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?

July 30, 2014 0 comment

More Greenwashing 2.0: Another Biofuels Credit Fraud Scheme Exposed

written by Eric Lane

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.

July 24, 2014 0 comment

Developing Details on Our Tesla Patents

written by Eric Lane

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.

July 21, 2014 0 comment

Cleantech in Court: Green Patent Complaint Update

written by Eric Lane

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 CO₂level, 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.

July 14, 2014 0 comment

Floating Island Patent Portfolio Combines Clean and Green

written by Eric Lane

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:

U.S. Patent No. 8,132,364, entitled Highly buoyant and semi-rigid floating islands,” is directed to an island made of two modules where each module has a semi-rigid internal frame, a bottom layer, and a semi-permeable top layer. The island has a planting pocket disposed between the first and second modules and supported by the semi-rigid frames.

U.S. Patent No. 7,810,279 is entitled “Buoyant wetland system” and directed to a simulated wetland system that includes a plant habitat that is normally submerged and has a first and second buoyant blanket assembly. Each buoyant blanket assembly comprises a non-woven mat that includes buoyant bodies. The plant habitat is comprised of a container of a non-woven mat that encircles a portion of growth medium. 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.

July 7, 2014 0 comment

Cleantech in Court: Green Patent Complaint Update

written by Eric Lane

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 and 8,283,484, 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.

June 27, 2014 0 comment

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