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.

Clean Transportation

Elon Musk Launches the Tesla-Patent Commons

written by Eric Lane

About six years ago, a handful of tech companies launched the Eco-Patent Commons. This initiative to share environmentally friendly patented technologies is administered by the World Business Council for Sustainable Development (WBCSD), a Geneva-based organization that promotes sustainability in business.

Last week, of course, Elon Musk, CEO of Tesla Motors, made quite a splash by announcing on the company blog that the EV maker would “donate” its entire patent portfolio. To be precise, what Musk said was “Tesla will not initiate patent lawsuits against anyone who, in good faith, wants to use our technology.”

Although Musk’s move is very much in the tradition of the Eco-Patent Commons, it is more significant and likely to have a greater impact. The significance of the brand new Tesla-Patent Commons is best understood by comparing and contrasting it with the Eco-Patent Commons before it. This comparative analysis reveals both major relative strengths and some flaws.

The greatest distinction between the two is in the nature, quality, and breadth of the available patents. The Eco-Patent Commons is comprised of tiny random slices of technologies developed by an eclectic mix of donating companies. An entity that wishes to commercially exploit technology in the Eco-Patent Commons would have to locate a donated patent directed to an important innovation, and any business opportunity would have to logically flow from that patented innovation.

Commercial success in this way seems unlikely for two reasons. First, aside from patent “troll” activity and similar secondary market business models, businesses do not flow from patents. It works much better the other way round: innovate, start a business around the innovation, and then, if possible, patent the innovation.

Second, the patents in the Eco-Patent Commons are those which the donating companies had little interest in exploiting themselves (or licensing to others) so the odds are slim that they are directed to important innovations that will be worthwhile for others.

Tesla’s patent portfolio, on the other hand, is large in scope, holistic in its breadth (i.e., supporting established commercial products) and presumably includes the crown jewels of the company. Everyone knows the technology areas, product areas, and business ventures Tesla’s patents can support. One can easily envision a number of well-defined businesses successfully selling electric vehicles, advanced batteries, and charging systems based on the freedom to operate provided by the Tesla-Patent Commons.

Keep in mind, though, that no commons can provide 100% freedom to operate. True, if you manufacture and sell EVs, batteries, or charging systems employing innovations that are entirely coextensive with the claims of Tesla’s patents you won’t be sued by Musk. However, these are complex technologies. What if your EV includes Tesla-patented innovations along side other technical features patented by another less commons-y patentee with enforcement proclivities?

Perhaps the possibilities are not so limited. Maybe instead of the need to match the features of their products to the donated patent claims, budding Tesla-tech businesses could copy the EV maker’s actual products, e.g., manufacture the Tesla Model S under another name. After all, the company has been around for a while and, to my knowledge, hasn’t been sued for patent infringement. So it seems Tesla has the freedom to operate for its existing product lines.

Then the question becomes whether there are any mechanisms besides its patents that confer upon Tesla this freedom to operate. For example, does Tesla license any of the technologies in its vehicles from other patentees? If so, a budding Tesla-tech business might need to ask Musk if he would consider assigning the rights under any relevant license agreements to which Tesla is a party.

So the Tesla-Patent Commons is very significant, and unlike any prior (small “e”) eco-patent commons, but the commercial and legal realities of dealing with patents and positioning technological businesses to be free to operate are always extremely complex.

Ultimately, the impact of Musk’s decision may turn on to what extent other such players will be motivated to invest in manufacturing vehicles, batteries, etc. using Tesla’s patented and patent-pending technology with the obvious upside being the proven innovation that technology brings and the down side being no exclusivity, instead of investing in their own R&D and patent protection where the upside may be exclusivity and the down side may be inferior or unproven technologies.

Only time will tell, and I’m sure this author and many other commentators will be watching this closely.

06/16/2014 2 comments

Renewable Energy

Federal Circuit Gives GE LED Patents New Life in Suit Against AgiLight

written by Eric Lane

A previous post discussed AgiLight‘s summary judgment win at the district court level where the LED lighting developer’s products were found not to infringe two GE patents, U.S. Patent Nos.7,633,055 (’055 Patent) and 7,832,896 (’896 Patent)

Two other GE patents – 7,160,140 entitled “LED string light engine” (’140 Patent) and 7,520,771 entitled “LED string light engine and devices that are illuminated by the string light Engine”(’771 Patent) – had previously been found not infringed in an earlier summary judgment decision.

The ’055 and ’896 Patents are entitled “Sealed light emitting diode assemblies including annular gaskets and method of making same” and “LED light engine,” respectively, and relate to LED string light engine structures and assembly methods.

GE appealed, and a recent decision by the Court of Appeals for the Federal Circuit reversed the grant of summary judgment with respect to the ’896 Patent (and the two other GE patents) and affirmed summary judgment with regard to the ’055 Patent.

The Federal Circuit found the district court’s interpretation of the claim term “IDC connector” in the ’140 and ’771 Patents was incorrect and unduly narrow. The district court limited it to a more specialized connector having four electrical terminals and a two-part housing that snaps together so the terminals pierce the conductor’s insulation.

The term should have been construed consistent with its ordinary meaning of “a connector that displaces insulation surrounding an insulated conductor to make electrical contact with the conductor.”

The issue for the ’896 Patent was whether the claim term “substantially ellipsoidal inner profile” means the entire inner profile of the LED lens must be substantially ellipsoidal or only a portion is substantially ellipsoidal. The district court held that the entirety of the lens must be substantially ellipsoidal, and AgiLight’s product did not infringe because it included non-ellipsoidal, conical portions.

The Federal Circuit disagreed, observing that in the only embodiment disclosed in the ’896 Patent (in Figure 7, reproduced below) the bottom half of the lens is not ellipsoidal:

According to the patent, the inner profile 152 of Figure 7 is ellipsoidal. It is undisputed that only a portion of the inner profile 152 (the part above the line at 152) is substantially ellipsoidal. The bottom half of that inner profile (the portion below the line at 152) is not arguably substantially ellipsoidal.

Thus, there was a genuine factual dispute as to whether the AgiLight product includes a “substantially ellipsoidal profile” and summary judgment was improper:

A key claim term at issue with respect to the ’055 Patent was an “annular gasket,” which the district court had interpreted to require an opening in its center that is capable of sealing off its center area.

In the the ’055 Patent, this feature is shown in Figure 4, where the annular gasket 32 surrounds LED 16 before a generally hollow member (not shown) is sealed against the top of the annular gasket to fully enclose the LED.

The court determined that the AgiLight lens (shown below) is not an “annular gasket” because the inner surface lacks an “opening” as required by the court’s interpretation of the term. The Federal Circuit agreed, noting that a concave inner surface cannot be an opening. So GE will get another opportunity to prove infringement of three the four patents asserted against AgiLight.

06/02/2014 0 comment

Renewable Energy

In GE Wind Patent Fight Federal Circuit Affirms Wilkins Inventorship Story is Incredible

written by Eric Lane

In previous posts (here, here, here, and here), I discussed a significant ancillary battle in the GE-Mitsubishi wind patent war. In this entertaining sideshow, GE and a former employee, Thomas Wilkins, have been fighting over ownership of two of the patents involved in the larger litigation.

The patent-at-issue in this case is U.S. Patent No. 6,921,985 (’985 Patent). The ’985 Patent is directed to a wind turbine that includes a blade pitch control system and a turbine controller coupled with the blade pitch control system. To increase the reliability of the turbine’s power supply, the turbine controller causes the blade pitch control system to vary pitch in response to transitions between different power sources.

After Wilkins brought a lawsuit to correct inventorship, Mitsubishi intervened in the suit. The case aroused Mitsubishi’s interest because the ’985 Patent is one of several asserted by GE against Mitsubishi in at least two lawsuits.

After the district court decided that Wilkins was not a co-inventor of the invention claimed in the ’985 Patent, Mitsubishi and Wilkins appealed.

In a recent decision, the Court of Appeals for the Federal Circuit affirmed the district court ruling.

To overcome the presumption that the named inventors on a patent are correct, an alleged co-inventor must prove his inventive contribution by clear and convincing evidence. The putative inventor can’t rely on his testimony alone. Rather, there must be evidence to corroborate his testimony.

The problem for Wilkins was that the district court found his testimony on inventorship not credible, and the proffered corroborating witness testimony fell short because the witnesses either relied on Wilkins or failed to provide ample basis for their opinions.

On appeal, Wilkins acknowledged his credibility problems but argued that the instances in which his credibility was impeached only extended to “immaterial and tangential points.” The appeals court disagreed:

Based on the trial record, we find no clear error in the district court’s assessment that the substance of Wilkins’s testimony, which addressed central issues such as conception and contribution, was inconsistent and purposefully evasive. We agree with the district court’s conclusion that Wilkins left his case with no credibility.

As it turned out, this wasn’t an issue of insufficient corroborating evidence of inventorship. Rather, as the court explained, the document Wilkins sent to GE’s German engineers, which he argued demonstrated his conception of the invention, did not disclose any elements of the claimed invention:

Notwithstanding that the record is devoid of proof that the German engineers relied on anything discussed in that document as part of their conception . . . our review of the record verifies that the document does not disclose any of the subject matter claimed in the ’985 patent.

In fact, the document in question “does not even depict the key feature Wilkins claims to have invented, i.e., a UPS powering the wind turbine’s three controllers.”

Therefore, there was no credible evidence of Wilkins’s conception: ”Wilkins provided no credible testimony for that document to corroborate” and “without credible testimony from Wilkins, there was nothing to corroborate.”

This chapter in the GE-Mitsubishi patent litigation appears to be closed.

05/27/2014 0 comment

Renewable Energy

CEPGI 2013 Year in Review Shows Record High for Green Patents

written by Eric Lane

The Clean Energy Patent Growth Index (CEPGI) recently released its 2013 Year in Review. Researched and published by the Heslin Rothenberg law firm, CEPGI is a quarterly report on clean energy patents granted in the United States.

CEPGI has been tracking green patent trends by technology sector, assignee, and geography since 2002.

Most years have seen new record highs in granted green patents, and 2013 was no exception, with 3175 clean energy patents granted by the U.S. Patent and Trademark Office. The year-to-year increase of 114 from 2012, however, was relatively small compared to the annual jumps in the last several years.

The leading sector in 2013 was Solar, with 965 patents granted, followed by 886 Fuel Cell patents, with Wind patents in third place. This was the first year Solar surpassed Fuel Cell patents, which dropped from its high of 1024 patents awarded in 2012.

Hybrid/Electric Vehicle patents jumped 123 from 2012 to 409 patents granted in 2013 to take the fourth place position, and Biomass/Biofuel patents were in fifth place, up 47 patents from the prior year to 226.

The largest annual percentage growth was in Geothermal patents, with a 50% increase (from 14 to 21 patents), and Hybrid/Electric Vehicle patents saw a 43 percent increase. Tidal/Wave energy patents rose 34 percent, Biomass/Biofuel patents grew by 26 percent, and Solar patents were up 12 percent.

The top patent owners for 2013 were GM, with 169 patents, followed by Toyota (158 patents), Samsung (103 patents), and GE and Honda, both with 89 patents. Rounding out the top ten were Mitsubishi, Hyundai, Ford, Vestas, and Siemens.

CEPGI’s Year in Review breaks out the leading patent owners by sector as well. The leader in Fuel Cell patents was GM, with 128, Toyota took second place with 110, and Samsung was in third place (69 patents).

GE led in Wind, with 66 patents in 2013. Mitsubishi was a fairly close second, with 54 patents, followed closely by Vestas (47 patents) and Siemens (41 patents). In 2013, the Solar patent field in was led by Samsung (31 patents) and SunPower (28 patents).

An interesting statistic is the large annual increase in the number of U.S. green patentees:

Looking only at 2013 . . . , around 1500 entities contributed to the record total of Clean Energy patents in 2013, which is hundreds more patent grantees than 2012.

This indicates that the universe of green patentees (read: green tech innovators) is rapidly growing and diversifying.

According to CEPGI, this effect is most pronounced in the Solar sector (“[o]ver 600 different entities were granted Solar patents in 2013″). In both Fuel Cells and Wind, by comparison, there were about 300 different entities granted patents in 2013.

The full report can be read and downloaded here.

05/19/2014 0 comment

Clean Transportation

As FTC Revises Rules for Fuel Economy Ads Green Guides Can Guide

written by Eric Lane

A piece published this week on Green Car Reports starts this way:

No one wants to buy a brand-new car, only to find out that its real-world fuel economy doesn’t match the numbers on the window sticker.

It struck me that this statement describes the plaintiffs in a number of greenwashing lawsuits filed (and covered in this space) over the last several years. The suits against Ford, Hyundai and Kia, Toyota, and Honda are notable examples where the actual miles-per-gallon allegedly did not match the sticker and/or the advertising.

Turns out the Federal Trade Commission will be revising its fuel-economy advertising guidelines and is seeking comments relating to ”information that helps marketers avoid deceptive or unfair claims,” among other things. Entitled the “Guide Concerning Fuel Economy Advertising for New Automobiles,” the guidelines were first issued in 1975.

One specific issue the FTC will consider is whether marketing material that makes a ”general fuel economy” claim should include a specific mile-per-gallon figure. Another question is whether an ad that specifies the fuel-economy rating in one EPA category or lists a specific mpg rating without specifying the category is deceptive.

For anyone familiar with the FTC’s Green Guides, these questions will be very familiar. The Guides for the Use of Environmental Marketing Claims were first published by the FTC in 1992 and have undergone at least three revisions, most recently in 2012.

The Green Guides states that claims of general environmental benefits are deceptive:

It is deceptive to misrepresent, directly or by implication, that a product, package or service offers a general environmental benefit.

Why? Because, the guides explain:

Unqualified general environmental benefit claims are difficult to interpret and likely to convey a wide range of meanings. In many cases, such claims likely convey that the product, package, or service has specific and far-reaching environmental benefits and may convey that the item or service has no negative environmental impact. Because it is highly unlikely that marketers can substantiate all reasonable interpretations of these claims, marketers should not make unqualified general environmental benefit claims.

It would be logical, I think, to extend this rule and its rationale to general fuel economy claims. Fuel economy ratings fall into different categories. They can be broken down into city and highway driving, for example, and many factors, such as how the car is tested, can determine the results.

Also, the Green Guides provide that marketing statements about recycling, for example, must specify exactly what percentage and which element of the product (the product itself, the packaging, or both) is recyclable or made from recycled material.

This required granularity should lend itself to rules that marketing statements about fuel economy benefits need to specify, among other things, the EPA category being touted.

Of course it was inevitable that regulators in particular fields would contemplate promulgating or revising their rules to take into account deceptive environmental marketing claims. They are fortunate to have the Green Guides to guide them.

05/09/2014 0 comment

Renewable Energy

Global Green Patent Filings Fell in 2013

written by Eric Lane

Berkeley-based IP Checkups recently published its 2013 Annual Report on cleantech patenting trends. Based on the firm’s proprietary green patent database – Cleantech PatentEdge™ – the report contains much interesting analysis driven by this powerful data analytics tool.

The major finding of the report is that, after several years of growth, worldwide published cleantech patent filings declined in 2013. This is measured by the number of cleantech patent documents published, which typically means a lag time of 18 months from application filing date for published patent applications, and may reflect the decrease in cleantech venture capital funding in 2013.

More particularly, the number of worldwide patent documents published in 2013 decreased by 6% from 2012.

Against this global backdrop, the share of U.S. patent grants grew over the last several years from 16% of the worldwide total in 2009 to 22% last year. Interestingly, the share of U.S. published patent applications has remained fairly steady over this period, comprising about 1/3 of worldwide cleantech patent publications.

The report also looks at green patent documents by industry sector and found that Renewable Energy Generation is the leading sector with 23% of the patent documents. This lead is attributable to growth in solar and biofuels patents, according to the report.

Other sectors that have seen growth in the past several years are Transportation, Green Materials, Energy Storage, and Efficiency.

You can read the complete report here.

04/30/2014 0 comment

Renewable Energy

Danisco and Novozymes Continue to Spar Over Patents

written by Eric Lane

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.

04/16/2014 0 comment

Renewable Energy

San Diego Cleantech Open Briefing to Focus on Eco-marks and Green Patents

written by Eric Lane

If you’re in or around San Diego this week be sure to check out the Cleantech Open Business Briefing this Thursday, April 10th.

The Cleantech Open is a non-profit organization that runs the world’s largest cleantech accelerator. The Business Accelerator fosters promising startups in cleantech fields through a six-month program that includes cutting-edge entrepreneur training and mentoring (including in IP!), client and partner opportunities, and funding connections.

The business briefings bring together Cleantech Open members and staff and early-stage cleantech start-ups and entrepreneurs. Attendees will get an overview of the Cleantech Open and the Business Accelerator.

I will be speaking on some broad themes about the role of patents in the cleantech industry. Entitled “Green Patents and Green Branding: Global Perspectives and News You Can Use,” my talk will cover a range of big picture stuff and practical info on green patenting and protecting eco-marks.

The event will be held at the World Resources SimCenter in downtown San Diego from 6:00-8:00 PM. You can find more information about the event and register here.

04/09/2014 0 comment

Renewable Energy

Who Owns All the Smart Grid Patents?

written by Eric Lane

Ever wonder who owns all the smart grid patents? With all of the acquisitions in smart grid (see, e.g., here and here), it seems a lot of folks have been considering the question.

A recent study by patent analytics firm Relecura on smart grid patent holders seeks to answer this question. It turns out the top five are ABB, GE, Panasonic, Siemens, and Toshiba:

The study breaks out the results by six sub-technology categories (communications, software, smart meters, sensors, substation automation, and distribution automation) and lists the top large entities and SMEs in each subcategory:

The full report, which can be found here, styles itself a “preliminary survey of the Smart Grid assignee landscape and first-cut identification of patent asset holders in Smart Grid technology.”

According to Relecura, the purpose of the study is to identify potential licensees and acquisitions targets for each of the sub-technologies. The study uses 2008 as a reference year, and defines its Potential Licensees and Potential Acquisitions Targets relative to that year.

More particularly, Potential Licensees are entities whose patent applications were filed in 2008 or later while Potential Acquisitions Targets are typically small or medium sized entities with granted patents from applications filed in 2008 or earlier. In other words, small companies and SMEs with relatively mature patent portfolios are deemed more ripe for acquisition and those with younger patent portfolios are thought to be more amenable to licensing IP.

With so much activity in smart grid M&A, this report could be useful to a lot of people.

03/26/2014 0 comment

Renewable Energy

Butamax Wins Appeal as Federal Circuit Reverses Claim

written by Eric Lane

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.

03/19/2014 0 comment

Clean Transportation

Chinese Eco-mark Lawsuit Ends Well for Tesla

written by Eric Lane

A previous post reported on Tesla’s Chinese trademark problem. Apparently, a businessman named Zhan Baosheng had registered the TESLA (or “Te Si La” transliterated) trademark in China, blocking the American automaker from using the mark there.

Mr. Zhan was also operating a web site using the Tesla China domain (www.teslamotors.com.cn), and operating a Tesla-branded account on the Chinese microblog site Sina Weibo.

As part of a recent press release announcing its plan for growth in China the company said it resolved the trademark issue. More particularly, Tesla obtained a court decision granting it the right to use the TESLA mark in China (see the story here on Green Car Reports and covered by Clean Technica here).

Veronica Wu, Tesla’s vice president for China operations, said the company had won this right without the need to pay Mr. Zhan (who had apparently hinted that he would sell the trademark for millions of dollars). According to Wu, “we went to court and won.”

Though technically Zhan may have been the first user of the TESLA mark in China, the court decision seems right because his apparent high asking price for the mark signals bad faith on his part and that his use may not have been bona fide.

This decision bodes well for American and other non-Chinese companies who may need to protect and enforce their intellectual property rights against local competitors in China.

The highest profile cleantech IP dispute in China is the trade secrets and copyright case between American Superconductor and Chinese turbine manufacturer Sinovel, which made it all the way to, and is (as far as I know) still pending in, the Chinese Supreme Court.

03/05/2014 0 comment

Renewable Energy

Court Bounces Danisco Action Premised on Pre-Patent Proclivities

written by Eric Lane

A previous post reported on a declaratory judgment action brought by DuPont-owned biopharmaceutical company Danisco against Novozymes. The two companies are both Danish and appear to be arch rivals. As the court described it, they are “reputedly the two major competitors in the field of developing and supplying industrial enzymes used in

01/18/2013 1 comment

Renewable Energy

Storage in the Mist: LightSail’s Patented CAES Tech

written by Eric Lane

LightSail Energy (LightSail) is a Berkeley, California, company that has developed compressed air energy storage technology which may be used for grid-scale storage.

The company’s central innovation is the injection of a mist of water spray into a compressed air system so

12/10/2012 2 comments

Renewable Energy

Valence Victorious in Canadian Advanced Battery Patent Suit

written by Eric Lane

Valence Technology (Valence) is an Austin, Texas, energy storage technology developer that makes lithium iron magnesium phosphate battery modules.

According to this piece in the Austin Business Journal, Valence recently won a four-year patent infringement suit against Montreal-based Phostech Lithium

03/21/2011 1 comment

Newer Posts

Older Posts