Griffith Hack Clean & Sustainable Technologies

A123 in patent dispute by Justin Blows
September 29, 2009, 12:53 pm
Filed under: Feature | Tags: , , ,

Bloomberg is reporting that A123 Systems Inc., a maker of lithium batteries for plug-in cars that first sold stock today, is in talks to end a patent dispute with the University of Texas and Hydro-Quebec over technology underlying its products.

Justin Blows


Embracing Sustainability Bears Innovation & IP by Justin Blows

A recent Harvard Business Review article, Why sustainability is now the key driver of innovation, is resoundingly convincing: Businesses that embrace sustainability will innovate and flourish.

Traditional business leaders believe becoming environmentally friendly will erode competitiveness but the reality is just the opposite. Companies that embrace sustainability are inevitably taken down the road of innovation, and consequently develop intellectual property that provides invaluable brand and technological differentiation in the marketplace. And consumers love it.

Protecting sustainable innovation, with patents for example, crystallizes the first mover advantage providing significant commercial advantage.

The authors of the article looked at 30 large corporations, and concluded that sustainability is a mother lode of organizational and technological innovations. The article is full of amazing examples.

Hewlett-Packard, for example, realized in the 1990’s the lead in solder would be phased out because of environmental concerns. Rather then lobby for weakened regulations they embraced the inevitable and developed a lead free solder. It was able to meet EU directives on lead-free solder as soon as they were passed providing an advantage over competitors. Its just one example of why its smarter to comply with the most stringent rules before they are enforced. Companies that are in the vanguard of compliance naturally spot business opportunities first.

I think will are now seeing the same opportunities in renewable energy. Governments are starting to tighten the screws with renewable energy targets, feed in tariffs and by pricing carbon, and those that embrace sustainability and innovate will be the winners.

Old & returned equipment used to cost CISCO eight million dollars a year in recycling costs. It realized that most of it still worked and started incorporating working used parts into new units. Reuse is now around 45% and recycling costs have fallen by 40%.

Reuse is going to become more important as we inevitably expend our non renewable resources. But acting now before the crunch is highly advantageous and stimulates innovation creating valuable IP.

FedEx & Kinko’s printing realized that they could significantly reduce greenhouse gas emissions, fuel and logistic costs. Instead of shipping paper document around the US, they offered costumers the option of sending the document electronically to a printer near the final destination for printing. A paper copy then need only be shipped locally. That’s innovation. Save money, save the planet, and win customers.

One notable technology that the article didn’t discuss was hybrid cars. In particular, Toyota stands out from the competition, and I would say they dominate the hybrid car intellectual property landscape. This is an auto company that acted on sustainability concerns and innovated well before governments started acting.

While US giants like General Motors are on their knees, brought their by their gas guzzling dinosaurs, Toyota has been innovating in a technology that addresses concerns about suitability and has crystallised its first mover advantage by patenting hybrid car innovation. Toyota has more patents in hybrid car technology than any one else. It does not appear that the other companies will be able to catch up, at least in the medium term.

Now that governments are turning the screws to increase the fuel efficiency of the car fleet to improve energy security and reducing greenhouse gas emissions, Toyota will reap what it has sown. United States President Obama wants national fuel efficiency to increase by 5% each year from 2012 to 2016. The United Kingdom government has confirmed it will offer from ₤2,000 to ₤5,000 to purchasers of electric and hybrid cars . The Japanese government introduced inducements worth around US$4,000 per purchased car, propelling the Toyota Prius to become the most sold car of any kind in April this year.

As the realities of climate change, resource scarcity, and the costs of pollution bite, traditional business models are collapsing. Those that embrace sustainability will innovate, protect their new IP, and flourish.

Justin Blows

I am going to the Anzses conference next week. Let of know if you would like to meet – Justin Blows by Justin Blows
September 25, 2009, 5:13 pm
Filed under: Feature

Just send me a message via LinkedIn or email

Australian Solar Institute – Round 1 funding guidelines released. by Justin Blows
September 25, 2009, 3:18 pm
Filed under: Feature

Guidelines for round 1 funding by the Australian Solar Institute are now available at:

Some points to note are:

  • $100m from Australian Government from 2009 to June 2012 R&D funding to be split 50:50 between PV and CST, to be reviewed after 12 months
  • 60% R&D funding to be allocated through competitive process open to public and private researchers in Australia
  • 40% R&D funding set aside for core research projects, of which $15m allocated to Foundation Projects

Justin Blows

Excluded Icon? Paice ITC Action Seeks Prius Importation Ban by Justin Blows
September 25, 2009, 7:59 am
Filed under: Feature | Tags: , , ,

Eric Lane, the author of the Green Patent Blog kindly submitted the following post on the ongoing battle between Paice and Toyota.  For other posts on hybrids click here –  Justin Blows.

A U.S. patent historically has provided its owner with an almost absolute right to exclude others from making, using, selling and offering to sell the patented product. That all changed with the U.S. Supreme Court’s eBay v. MercExchange decision in 2006.

In eBay the Supreme Court reversed the U.S. courts’ long-standing practice of automatically issuing an injunction upon a finding of patent infringement and instead held that the traditional four-factor equitable test for injunctive relief must be analyzed in each case.

The timing of the eBay decision couldn’t have been worse for hybrid technology company Paice, LLC (Paice). Back in 2005, Paice sued Toyota in the Eastern District of Texas alleging that the second generation Prius, the Highlander and the Lexus RX400h sport utility vehicle infringed U.S. Patent Nos. 5,343,970 (’970 Patent), 6,209,672 and 6,554,088.

In December of 2005, a jury found that the accused vehicles did not literally infringe Paice’s patents but did infringe two claims of the ‘970 Patent under the doctrine of equivalents. The jury awarded about $4.3 million in past damages.

Having succeeded on infringement, Paice moved for a permanent injunction. Less than a month after the hearing on the injunction motion, but before the district court ruled on it, the Supreme Court handed down the eBay decision.

The court was now bound to analyze the four injunction factors. As a result, the court refused to grant an injunction, instead awarding Paice an ongoing royalty of $25 per infringing vehicle (a figure that was later raised to $98 per vehicle).

As of the date of this writing, two other district court cases between Paice and Toyota over hybrid vehicle technology remain pending in the U.S. district courts.

Denied an injunction by the district court, the court-imposed ongoing royalty affirmed in principle by the Federal Circuit, Paice has pursued Toyota but hasn’t gotten any exclusion satisfaction out of its hybrid vehicle patents.

That may be about to change.

Earlier this month, Paice filed a complaint in the U.S. International Trade Commisson (ITC) asking the ITC to investigate whether Toyota’s importation of the third generation Prius, the Camry Hybrid, the Lexus HS250h and RX450h (Accused Products) infringe the ‘970 Patent.

The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337. It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.

According to the complaint (paice_itc_complaint.pdf), Toyota has made judicial admissions in the form of discovery responses and stipulations in the prior district court actions that the drivetrains of the Accused Products are materially the same as those that were found to infringe the ‘970 Patent.

Moreover, Paice asserts, Toyota is precluded from challenging the infringement, validity and enforceability of the ‘970 Patent because those issues were “fully and finally litigated against Toyota” in the district court, giving rise to collateral estoppel.

Paice further asserts that res judicata also precludes Toyota from challenging the validity and enforceability of the ‘970 Patent because the Accused Products are materially identical to the vehicles found to be infringing in the district court case.

According to Paice, that leaves only issues relating to “domestic industry,” which all ITC complainants must prove. Section 337 requires there be an industry in the U.S. relating to the products at issue. This includes an economic prong (demonstrated investment in plant/equipment, labor/capital, research and development or licensing) and a technical prong (demonstrated practice of the asserted intellectual property right).

Paice alleges it meets the domestic industry requirement because of its engineering, research and development activities and its licensing activities in the U.S.

Paice is requesting a permanent limited exclusion order barring entry into the U.S. of the Prius, Camry hybrid and the two accused Lexus models. With this ITC action, Paice is ratcheting up the pressure on Toyota to pay a large sum in settlement and/or licensing fees.

Considering what’s at stake here, I’m surprised the Paice complaint hasn’t gotten more media attention. I don’t think it’s an exaggeration to say this could be the Blackberry case of clean tech and one of the biggest green patent stories we’ve seen so far.

Eric Lane

Going around Oz with bio fuel by Justin Blows
September 24, 2009, 10:59 am
Filed under: Feature | Tags: ,

The ABC is reporting that Paul Carter is to ride around Australia on a motor cycle running on biodiesel. He is a comedian, but the ride is no joke. The bike was built at the University of Adelaide by students.

Justin Blows

Sydney Cleantech Network launch by Justin Blows
September 23, 2009, 10:00 am
Filed under: Feature | Tags: , , , ,

Last night I attended the Launch of the Sydney Cleantech network.  Griffith Hack is a proud supporter of the network.

The turn out was great, with a mix of cleantech start ups, VC’s, service providers and government representatives.

If your in NSW and interested in cleantech, you will probably find the right cleantech contacts through this network.

I was very pleased to hear speakers from several cleantech companies, all of which had a strong appreciation of IP and the need to develop their patent portfolio.

Justin Blows