Begun, the Cleantech Patent War Has

by Eric Lane
Intellectual property is playing a crucial role in the current clean tech boom by encouraging innovation and facilitating deployment of clean technologies.Green patents in particular are very important.  Whether it be the guarantee of exclusivity in an increasingly crowded clean tech industry or the revenue streams generated by licensing proprietary technology to others, patents provide a powerful tool that clean tech companies can use in a variety of ways to create value. And as one would expect, with this means patent litigation activity from both cleantech players and non-practicing patentees targeting them.  Begun, the Cleantech Patent War Has.

 

Clean Tech Non-practicing Patentees in Court:  The (First and) Second Wave

Often derided as “patent trolls,” non-practicing patentees (NPPs) – individuals, patent-holding companies and other non-practicing patent holders – do not commercialize their patented technology but instead generate revenue through licensing. They approach firms they believe to be manufacturing or selling embodiments of their patented technology and typically use the threat of infringement suits as a stick in negotiations.

An initial round of major NPP patent litigation hit the clean tech industry in the mid-2000s.  There were two significant instances of this activity.  The first was a series of lawsuits brought by a hybrid power train startup called Paice against Toyota, accusing the automaker of infringing some early patents on gas-electric hybrid vehicle technology.  After a five-year battle, Toyota ultimately licensed all of Paice’s 23 patents.

The second was Columbia University Professor Gertrude Neumark Rothschild’s enforcement of a pair of patents relating to pioneering LED production techniques against many major targets, including Toshiba, Panasonic, Sony Ericsson, LG Electronics, Motorola, Samsung, Sanyo, Sharp, Philips Electronics According to her attorney, Rothschild has reached settlements or licensing agreements with more than forty companies generating more than $27 million.

Clean tech is now in the midst of a second wave of NPP litigation.  Leading the charge is Sipco LLC (Sipco), an Atlanta, Georgia-based developer of wireless mesh technology. In August 2009 Sipco sued Florida Power & Light Co. and FPL Group Inc. in federal court in Miami, alleging that the wireless network technology in the utility’s smart grid system infringes three Sipco patents relating to smart grid technology.  Sipco struck again in November 2010 suing such smart grid companies as Energate, Ecobee, Rainforest Automation, SmartSynch, AMX Corporation, SimpleHomeNet and CentraLite Systems.

Earlier this year, Sipco expanded the scope of its patent enforcement activity to target players in the electric vehicle charging station space including Coulomb Technologies and ECOtality, as well as additional energy management, control system, and wireless companies such as EnergyHub, Jetlun, SmartLabs, ABB, and Ingersoll-Rand.

 In solar, a small patentee called Solannex recently began targeting major thin-film photovoltaics players with a patent directed to interconnect structures for PV cells.  In the last few months Solannex has sued Miasolé and Nanosolar for patent infringement.  If you’re operating in smart grid or thin-film, or developing technology to enter the space it would be prudent to be aware of the Sipco and Solannex patents.

 

Big Oil Proxies – Enforcing Green Patents

With just about every major oil company involved in renewables on some level, particularly biofuels, one recent patent infringement suit may mark the start of a trend.  In February Butamax Advanced Biofuels, a Delaware-based biofuel joint venture between BP and DuPont sued Gevo, an Englewood, Colorado, advanced biofuels company, for infringement of a patent directed to Butamax’s biobutanol production technology and recombinant microbial host cells that produce the biofuel.

As far as I know, this is the first instance of biofuel patent litigation involving a major oil company.  With the oil majors increasingly involved in biofuels startups via research funding, buyouts, and JVs like Butamax, it won’t be the last.  Energy companies are no stranger historically to patent litigation in technology, as evidenced in the 1990s by Unocal’s lawsuits over its MTBE patents and the long running patent fight by Energy Conversion Devices, backed by Texaco, over nickel metal hydride battery technology.

So while many of these cleantech companies are still maturing, the cleantech patent wars have definitely begun.
4 replies
  1. Pavel Kopylov
    Pavel Kopylov says:

    Thanks for the great coverage of the patent battles within greentech.
    Interesting, what is your opinion, what would be the result of sucu wars? would it be creation of the patent pools and collaboration, as happened with telecommmunications industry (governed by the standards) and could probably be the case at biotech?

Trackbacks & Pingbacks

  1. […] let the reader decide himself, based on several articles (SmartGridToday,  Green Patent Blog, CleanTech Blog). I have put Sipco on my list of companies to follow, but for this article I will only stick to […]

  2. […] certainly has gotten very bad press. See SmartGridToday,  Green Patent Blog, CleanTech Blog. There’s no doubt that Sipco is litigating aggressively, and doing it proudly and openly […]

  3. […] will let the reader decide himself, based on several articles (SmartGridToday,  Green Patent Blog, CleanTech Blog). I have put Sipco on my list of companies to follow, but for this article I will only stick to […]

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