California Patent Attorney® Blog

April 2011 Archives

Algae Biofuels: On the Road to Economic Viability or Just "On the Road"?

April 18, 2011,

algae-frog.jpgCalifornia - Annually, the San Diego Center for Algae Biotechnology (SD-CAB) holds a symposium featuring a distinguished panel of speakers from academia, government labs and private research centers as well as businesses and investors interested in using algae for commercial fuel production. This year's Algal Biofuels Symposium will be held Friday and Saturday, April 29-30th, in the Frederic de Hoffmann Auditorium of the Salk Institute for Biological Studies in San Diego, California and is entitled: "Algal Biofuels - Advancing to Economic Viability."

Day one of the symposium includes science speakers from the commercial side of algae biofuels research and development. Presentations on research from the newly established Consortium for Algal Biofuels Commercialization (CAB-Comm) will be held on the second day. The goal is to bring together academic and commercial sector scientists at the forefront of algal biofuels research to talk about the current state of algal molecular genetics, biochemistry, synthetic genomics and related technologies - all with an eye toward commercialization.

The mission of SD-CAB is to support the development of innovative, sustainable and commercially viable algae-based renewable energy sources, green chemical and biological products, water conservation and CO2 abatement in the San Diego area. Algae produce a variety of interesting molecules and fuel precursors, including triglycerides and fatty acids that can be converted to biodiesel, as well as isoprenoids and lipids that can be converted to traditional diesel fuel and gasoline. Algae can also be used to produce hydrogen or biomass, which can then be digested into natural gas.

The US consumes 140 billion gallons of liquid fuel every year. Algae are capable of producing 3,000 gallons of liquid fuel per acre per year. Algae grows well in seawater with minimal nutrient inputs and some strains can grow in desert ponds utilizing high-saline water from otherwise unusable aquifers. Competition between algae and traditional row-crop agriculture for arable land, fresh water and application of petroleum-based fertilizers could therefore be avoided. Many species of algae can even grow in wastewater from treatment plants, cleaning the water all the while.

Biofuel produced by algae approaches carbon neutrality. Since the photosynthetic organisms first remove the CO2 from the atmosphere, the overall carbon footprint is minimal. Algae production creates green-collar jobs, too. (See: http://www.cleantechsandiego.org./why-san-diego-leads/advanced-biofuels.html). The San Diego Association of Governments (SANDAG) 2010 report on the Economic Impact of Algal Biofuel Research estimates a current payroll of approximately $28.8 million, and rising, in the San Diego region alone. (See: http://algae.ucsd.edu/_files/EconomicImpactSummary2010.pdf).

The points made above provide intellectual property lawyers, venture capitalists, entrepreneurs and green collar workers alike with reason to hope for cleaner fuels produced more-sustainably sometime in the near future.

Federal Circuit Requires High Particularity Standard for False Marking Claims

April 11, 2011,

bottles.jpgCalifornia - In In re BP Lubricants USA Inc., the Federal Circuit Court of Appeals held that a false marking claim must satisfy the particularity standard of Fed.R.Civ.P. 9(b), which requires that complaints alleging fraud or mistake "state with particularity the circumstances constituting fraud or mistake." A complaint containing only "conclusory allegations that a defendant is a 'sophisticated company' and 'knew or should have known' that the patent expired" was ruled to be insufficient to meet that standard. Granting in part Petitioner BP Lubricants USA, Inc.'s request for mandamus, the Court ordered the district court to dismiss relator's complaint with leave to amend.
Petitioner BP distributed products using a bottle design for which they had received a design patent. BP was alleged to have continued to mark its bottles with the patent numbers, even after its expiration in 2005, despite being a "sophisticated company" that had "experience applying for, obtaining, and litigating patents," for the purpose of deceiving the public.

The purpose of the Rule 9(b) standard is to weed out frivolous claims. To survive dismissal, a plaintiff must show "some objective indication to reasonably infer that the defendant was aware that the patent expired." If this awareness is established, the combination of actual misrepresentation and awareness of the falsity of the representation would be enough to infer the required "intent to deceive" element of the crime.

The Court found that relator's argument that BP was a "sophisticated company" that "should have known" of the patent's expiration was not enough to reasonably infer that BP had actual awareness. In addition, the mere fact that the mark on the bottles was false and misrepresentative was insufficient to show the Petitioner's possessed intent to deceive, the relationship between factual falsity and state of mind not being strong enough.

Addressing the relator's concerns that the anonymous nature of false marking meant that specific individuals could not always be named to show deceptive intent, the Court stated that there were other types of evidence from which deceptive intent can be reasonable inferred. For example, evidence that Petitioner had sued third parties for infringement after the expiration of the patent or had revised its markings after patent expiration would in the Court's eyes be sufficient.

Lastly, the Court addressed its earlier ruling in Pequignot v. Solo Cup, 608 F.3d 1356, which held that "the combination of a false statement and knowledge that the statement was false creates a rebuttable presumption of intent to deceive the public." While the Pequignot presumption can be an important factor in meeting the Rule 9(b) pleading standard, the Court ruled that by itself it is not enough.

This case marks the first time the Federal Circuit has ruled conclusively on whether false marking is subject to the pleading standards of Rule 9(b). In determining that the heightened standard of Rule 9(b) is necessary, courts will now have an easier time dismissing false marking cases deemed to be frivolous.

Clean Tech IP is Here to Stay...and Grow

April 10, 2011,

wind-turbine.jpgCalifornia - What is the tie that binds the following eleven threads? 1) Energy generation (wind, hydro, solar, geothermal, biofuels), 2) energy storage (batteries, fuel cells), 3) energy infrastructure, 4) energy efficiency, 5) transportation, 6) water & wastewater (conservation, treatment), 7) air & environment (clean-up, monitoring, offsets and trading), 8) materials (chemical, bio, nano), 9) manufacturing/industrial (smart production), 10) agriculture (natural pesticides, land management, aquaculture) and 11) recycling & waste management.

The answer is that substantial portions of each fall under the "clean tech" umbrella. Clean tech, then, spans many diverse industry segments. However, this diversity is unified by a clear set of overarching goals: 1) provide superior performance at lower costs, while 2) greatly reducing or eliminating negative ecological impact, at the same time as 3) improving the productive and responsible use of natural resources. (See http://cleantech.com/about/cleantechdefinition.cfm).

Fortunately Eric L. Lane, a patent attorney in San Diego, has done an excellent job of synthesizing the legal implications of this growing area of IP and presenting it to us in the form of a highly literate and pleasantly readable book. The book is entitled "Clean Tech Intellectual Property: Eco-marks, Green Patents, and Green Innovation" and is published by the Oxford University Press (2011). (http://www.amazon.com/Clean-Tech-Intellectual-Property-Innovation/dp/product-description/0199737096).

Mr. Lane's book presents clean tech IP as an important area of law and policy seeking to foster innovation in order to improve the environment and curb global warming. In it, he treats green intellectual property as a discrete field set apart from the general realm of intellectual property law, and offers 260 pages of arguments and evidence beckoning us to join him in his belief that it is worthy of study, practice and expertise in its own right.

Section one of the book presents strategies for drafting and prosecuting clean tech patent applications, building green patent portfolios and clean tech transfer and licensing. Section two covers clean tech and the courts. Topics include "Green Patent Litigation Past, Present, and Future" as well as non-practicing patentees (NPP's) in the clean tech world. Green branding, greenwashing and eco-mark enforcement are covered in section three. Section four, the final section, is devoted to green patent policies and initiatives and concludes with the debate over IP rights in low-income developing countries. All sections include analyses of relevant cases and lessons learned.

In the end, "Clean Tech Intellectual Property: Eco-marks, Green Patents, and Green Innovation" is the first comprehensive review of intellectual property and clean technology. It relies upon industry trends, legal developments and case studies to analyze the dynamic interplay between clean technologies and intellectual property regimes: 1) how IP law affects clean tech growth and 2) how green business models shape IP practice. If Mr. Lane is correct, as we and the fellowship of kindred minds suspect he is, then this first book will not be the last. Clean tech really is here to stay...and grow.