Category Archives: General

Federal Circuit to Decide Validity of ChargePoint Patents

  • Oral arguments were heard last Thursday at the Federal Circuit for a patent dispute between electric vehicle charging station rivals ChargePoint, Inc. and SemaConnect, Inc.
  • The Federal Circuit is reviewing an earlier decision by a federal court in Maryland that found four ChargePoint patents to be invalid for claiming inventions that are not eligible for patent protection.

The United States Court of Appeals for the Federal Circuit is poised to decide the validity of four key ChargePoint, Inc., patents after hearing oral arguments last Thursday. The patents at issue are directed to a networked electric vehicle charging station (EVCS) and were previously held invalid by a federal court in Maryland for claiming inventions that are ineligible for patent protection. ChargePoint appealed that holding to the Federal Circuit. Continue reading Federal Circuit to Decide Validity of ChargePoint Patents

Vestas Challenge to Invalidate GE Wind Tech Patent is Denied

  • The Patent Trial and Appeal Board denied a challenge brought by Vestas Wind Systems A/S against a General Electric patent directed to technology for connecting wind turbines to the electric grid.
  • GE and Vestas remain locked in a long-running patent battle over “Zero Voltage Ride Through” or “ZVRT” technology. Each party has brought challenges against the validity of the other party’s patents to the Patent Trial and Appeal Board, which is expected to hear those challenges over roughly the next 12 months.

The Patent Trial and Appeal Board denied a challenge brought by Vestas Wind Systems A/S in the year-long patent feud with General Electric.  The Board, an adjudicatory body within the U.S. Patent and Trademark Office, determined that the challenge brought by Vestas against GE’s U.S. Patent No. 6,921,985 was nearly identical to an earlier challenge heard by the Patent Office.  Since re-hearing similar challenges is considered an inefficient use of the limited resources of the Patent Office, the Board decided to deny the Vestas challenge.

The parties began their patent dispute in July 2017 when GE sued Vestas in federal court for allegedly infringing a pair of GE patents directed to technology for safely connecting wind turbines to the electrical grid.  Later that year, Vestas countersued, alleging that GE infringed two Vestas patents in the same technological field.  The parties then challenged the validity of each other’s patents at the Patent Trial and Appeal Board, and the federal court litigation was stayed pending the outcome of these challenges.  To date, GE has seen both of its challenges to a Vestas patent “instituted,” or accepted for trial before the Board.  In contrast, Vestas has had only one of its two challenges instituted, with a third challenge to be decided in the coming months.

For the Vestas challenge against the 985 Patent, Vestas argued that the claimed invention of the patent was obvious – and thus unpatentable – when compared against what was already known in the wind turbine industry circa 2003 (when GE filed a patent application that became the 985 Patent).  The 985 Patent is directed to technology that allows a wind turbine to stay connected to the electrical grid during a low voltage transient; GE has named this technology “Zero Voltage Ride Through” or ZVRT.

To demonstrate the state of wind turbine technology in 2003, Vestas used a requirements document made by E.ON in 2001 called the Supplemental Network Connection Rules for Wind Energy Systems.  Vestas argued that this E.ON document, when considered with additional documents and knowledge available at the time, would have rendered the claimed ZVRT technology obvious to a typical wind turbine designer.  If that was true, then the 985 Patent should not have been issued by the Patent Office and would be subject to cancellation.

GE fought back against the Vestas challenge by noting to the Board that the E.ON document had already been extensively reviewed and considered by the Patent Office during a previous challenge to the 985 Patent by another party.  The Board has rules that allow it to end any challenge that is based on “the same or substantially the same” documents and arguments that were already considered by the Patent Office.  The E.ON document was considered by the Patent Office years ago during a challenge brought by Mitsubishi Heavy Industries while Mitsubishi and GE were engaged in patent litigation.  The 985 Patent survived that earlier challenge that was based in part on the E.ON document.

In its decision issued in late October, the Board ultimately agreed with GE that the Vestas challenge to the 985 Patent was too similar to Mitsubishi’s earlier challenge.  Due to the similarity between the documents and arguments presented, the Board determined that moving forward with the Vestas challenge by instituting a trial would be a waste of Board resources.  As a result, the Board denied Vestas’s challenge to the 985 Patent.

Although denial of this challenge is a negative development for Vestas, it has another challenge against the 985 Patent that remains pending at the Board.  That second challenge was filed a few months after the recently-denied first challenge, and provides alternatives to the E.ON document as a basis for unpatentability.  A decision on whether to institute that case is expected by the end of February.

A Closer Look at Tesla’s Open-Source Patent Pledge

In 2014, Elon Musk announced that he was “open-sourcing” Tesla’s patents.  He argued that doing so would allow the electric vehicle market to grow more rapidly.  While Musk’s original announcement was short on details, the company has since provided additional information regarding the use of Tesla’s patents in its Patent Pledge.  Echoing language from Musk’s announcement, the Patent Pledge states that Tesla “will not initiate a lawsuit against any party for infringing a Tesla Patent through activity relating to electric vehicles or related equipment for so long as such party is acting in good faith.”

The Patent Pledge provides a potential path for companies to use the technology covered by Tesla’s patent portfolio.  Tesla is the assignee of over 350 U.S. utility and design patents covering a broad range of technology, from thermal management systems to door handles.  However, companies considering whether to use Tesla’s patented technology should carefully review several key restrictions found in the Pledge.

Continue reading A Closer Look at Tesla’s Open-Source Patent Pledge

Top Posts from Our First Year of the Duane Morris Green IP Blog

This week marks the one-year anniversary of our first post to the Duane Morris Green IP Blog, so we thought we’d mark the occasion with a look back at our top posts of the first year. This list was developed subjectively from a loose combination of reader feedback, page traffic, and republication. Continue reading Top Posts from Our First Year of the Duane Morris Green IP Blog

Patent Trial and Appeal Board Strikes Down Claims of Smart Meter Patent

  • The Patent Trial and Appeal Board has found parts of a smart power meter patent owned by Smart Meter Technologies (“SMT”) to be unpatentable.
  • A lawsuit over potential infringement of the patent by Duke Energy remains on hold pending an appeal of the Board’s decision.

In March 2016, Smart Meter Technologies, Inc. filed a lawsuit in federal court in Delaware alleging that Duke Energy infringed SMT’s U.S. Patent Number 7,058,524 by installing and operating automated power distribution equipment in residential installations.  The lawsuit named the smart meters used by Duke as OpenWay® smart meters sold by Itron, Inc.  Itron, which may have had an obligation to indemnify Duke, then petitioned the Patent Trial and Appeal Board to institute an inter partes review (“IPR”) of the ‘524 Patent, a procedure through which parties can request that the USPTO review an issued patent to challenge that the claims of the patent are not valid. Continue reading Patent Trial and Appeal Board Strikes Down Claims of Smart Meter Patent

Transatomic Power to Open Source IP Regarding Advanced Molten Salt Reactors

  • Advanced nuclear reactor design firm Transatomic Power announced that it will suspend operations and open-source its intellectual property.
  • Transatomic’s intellectual property portfolio includes three patent applications and, presumably, reactor designs and specifications that have been held until now as trade secrets.

Transatomic Power, a company that once aimed to repurpose spent nuclear fuel as an energy source for advanced reactors, announced recently that it will suspend operations and open source its intellectual property. Transatomic cited its inability to “scale up the company rapidly enough to build our reactor in a reasonable timeframe” as the reason for closing shop. Continue reading Transatomic Power to Open Source IP Regarding Advanced Molten Salt Reactors

Vestas Files New Challenge Against GE Wind Turbine Patent

  • After filing a first challenge against GE’s U.S. Patent No. 6,921, 985 in May, Vestas has filed a second challenge in August to expand its attack on that patent. GE had previously asserted the ’985 Patent against Vestas in a federal patent infringement lawsuit.

Last month Vestas Wind added yet another proceeding to its year-long patent battle against General Electric Company, filing a new challenge against GE’s U.S. Patent No. 6,921,985 at the Patent Trial and Appeal Board. Vestas had already filed one challenge against the ’985 Patent in May, and appears to have filed a second challenge to attack additional claims of the ’985 Patent. Continue reading Vestas Files New Challenge Against GE Wind Turbine Patent

Solar Panel Mounting Patents Found Invalid, Potentially Saving Defendants EcoFasten and SunModo

  • The U.S. Court of Appeals for the Federal Circuit found three patents directed to solar panel mounting technology to have defective priority claims. As a result, the allegedly-infringing products sold by EcoFasten and SunModo pre-date the patents, rendering the patents invalid.

The U.S. Court of Appeals for the Federal Circuit recently affirmed the invalidity of three patents directed to solar panel mounting technology. The patents are owned by solar installer D Three Enterprises LLC, and were asserted in federal court against SunModo Corporation and Rillito River Solar LLC, which does business under the name EcoFasten Solar. Now that the three patents have been affirmed as invalid, D Three’s lawsuit against SunModo and EcoFasten will potentially be dismissed. Continue reading Solar Panel Mounting Patents Found Invalid, Potentially Saving Defendants EcoFasten and SunModo

GE, Vestas Battling in a Technological Field They Dominate

  • GE and Vestas are now one year into patent litigation that has the potential to impact the U.S. wind turbine market. The parties reportedly control more than 80% of the market between them.
  • The patents at issue claim inventions in the field of controlling wind turbine generators. GE and Vestas are the preeminent patent owners in this field.

This week marks one year since GE filed a patent lawsuit against its main rival in the U.S. wind turbine industry, the Danish company Vestas A/S. In the past year, GE has modified its patent infringement allegations; Vestas has denied infringement, alleged inequitable conduct by GE when obtaining the patents, and counter-sued GE for infringing Vestas’ patents; and both parties have filed challenges to each other’s asserted patents with the Patent Trial and Appeal Board (see here and here). The litigation in federal court was also recently put on hold to await the outcome of those challenges at the PTAB. Continue reading GE, Vestas Battling in a Technological Field They Dominate

EVelozcity Loses Bid to Disqualify Part of Faraday’s Legal Team

  • While defending against allegations of trade secret misappropriation, EVelozcity attempted to disqualify part of Faraday’s legal team for a conflict of interest. That attempt fell short when the court ruled that EVelozcity had not shared confidential information with the allegedly-conflicted attorneys.

As discussed in our previous post, the artificial intelligence electric vehicle developer Faraday&Future, Inc. filed a lawsuit in January against rival startup EVelozcity, Inc. for misappropriation of trade secrets. Several senior members of the EVelozcity team were formerly employed by Faraday, and Faraday accused those former employees of stealing trade secrets on their way out the door. EVelozcity responded to these accusations with two motions to the court. Continue reading EVelozcity Loses Bid to Disqualify Part of Faraday’s Legal Team