Germany’s CentroSolar Group achieves remarkably quick result with trademark infringement complaint

October 8, 2009

Oregon-based Centron Solar has changed its name to Grape Solar, responding fairly quickly to an apparently effective complaint for trademark infringement and related claims filed against it in Arizona District Court by the German CentroSolar Group only about a week ago.  The German plaintiff asserted Registration No. 3,427,031 for the CENTROSOLAR® mark registered to CentroSolar Group.

The complaint alleges five related counts and asks for: (a) a TRO, preliminary injunction and permanent injunction; (b) an order requiring now-Grape Solar to unwind damage to CentroSolar (including notifying its  customers of the issue, delivering labels and other materials to plaintiff to destroy, abandoning its application for a CENTRON SOLAR trademark and transferring http://www.centronsolar.com to plaintiff; and (c) monetary awards.

According to the USPTO website, Grape Solar requested abandonment of its application for CENTRON SOLAR on Oct. 5, 2009 just before announcing its new name, but the centronsolar.com website still leads to Grape Solar as of now.   CentroSolar’s demands will likely be addressed in a settlement agreement resolving the case.

Oregon’s Register-Guard paper has an interesting article on Grape Solar’s president, Ocean Yuan’s approach in responding to the lawsuit.

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A123 reportedly working to settle lithium battery patent dispute on eve of highly successful IPO

September 24, 2009

Maker of lithium batteries for plug-in vehicles A123 Systems raised an incredible $400 MM in its IPO yesterday.  A123 is currently defending a patent infringement suit brought by the University of Texas and Canada’s largest utility, Hydro-Quebec.  According to the co-plaintiffs’ complaint, Hydro-Quebec is the university’s exclusive licensee of two lithium battery patents developed by university professor Dr. John Goodenough and his team.  The complaint also names defendants China BAK Battery, Inc. and Black & Decker, the former allegedly manufacturing A123 batteries used in the latter’s devices.   Massachusetts-based A123 filed a complaint in Boston against Hydro-Quebec seeking declaratory judgment of invalidity and non-infringement.  The Texas action was stayed and the Boston action dismissed pending reexam, with motions to restart proceedings subsequently filed in both cases.

Bloomberg reports that A123 has been in talks to settle the disputes, according to an unopposed calendaring motion filed by A123 in the Texas action on Sept. 15, about two weeks before the IPO.

The suits involve U.S. Patent No. 5, 910,383 (“Production Process of Carbonaceious Material and Battery”) and No. 6,514,640 (“Cathode Materials for Secondary (Rechargeable) Lithium Batteries”).

‘383 patent claim 1:

1. A process for the production of a carbonaceous material comprising the following steps:
subjecting a vacuum distillation residual pitch to heat treatment at a temperature of up to 420.degree. C. until the content of quinoline-insoluble components thereof becomes 50 to 80 wt. %, whereby said pitch is converted into a mesophase pitch;
grinding the thus-obtained mesophase pitch into fine particles having an aspect ratio not greater than 2;
subjecting the thus-ground product to oxidation treatment; and
subjecting the thus-oxidized product to carbonization or graphitization treatment.

‘640 patent claim 1:

1. A cathode material for a rechargeable electrochemical cell, said cell also comprising an anode and an electrolyte, the cathode material comprising a compound of the ordered or modified olivine structure having the formula:

LixM1(dtqr)DdTtQqRr(XO4)

wherein: N is a cation of a metal selected from the group consisting of Fe, Mn, Co, Ti, Ni or mixtures thereof; D is a metal having a +2 oxidation state selected from the group consisting of Mg.sup.2+, Ni.sup.2+, Co.sup.2+, Zn.sup.2+, Cu.sup.2+, and Ti.sup.2+ ; T is a metal having a +3 oxidation state selected from the group consisting of Al.sup.3+t, Ti.sup.3+, Cr.sup.3+, Fe.sup.3+, Mn.sup.3+, Ga.sup.3+, Zn.sup.3+, and V.sup.3+ ; Q is a metal having a +4 oxidation state selected from the group consisting of Ti.sup.4+ ; Ge.sup.4+ ; Sn.sup.4+, and V.sup.4+ ; R is a metal having a +5 oxidation state selected from the group consisting of V.sup.5+ ; Nb.sup.5+, and Ta.sup.5+ ; X comprises Si, S, P, V or mixtures thereof; 0.ltoreq.x.ltoreq.1; and 0.ltoreq.d, t, q, r.ltoreq.1, where at least one of d, t, q, and r is not 0.

Energy consultants clash over copyright in independent engineer’s report concerning coal-fired co-generation plants

August 15, 2009

Engineering consulting firms R.W. Beck and E3 Consulting provide independent engineering reports for developers to secure financing for energy projects.  When E3 provided a report for Calyon Corporate and Investment Bank on two coal-fired co-generation plants owned by Windsor Financing LLC, competitor R.W. Beck cried foul and filed a complaint in Colorado federal court alleging willful copyright infringement and three state law claims — unfair competition, deceptive trade practices, and unjust enrichment.

Reports disseminated by both companies contained a section called “Principal Considerations and Assumptions Used in the Projection of Operating Results.”  However, defendant E3 claimed that most of the language in Beck’s copyrighted reports was public domain because Beck had taken the material from a pre-existing third-party source which itself was in the public domain.

The district court granted summary judgment for E3.  In an Opinion issued August 14, 2009, the 10th Cir. affirmed as to the three state law claims but reversed and remanded on the copyright claim, finding that Beck had presented evidence that it had not used language from a third-party report, but rather its own in-house copyrighted documents.

Not too much should be read into this decision.  In finding that Beck presented evidence supporting its copyright and reversing summary judgment, the appellate court did not affirm the presence of a copyright belonging to Beck.  Rather, it merely affirmed that there is a factual dispute as to whether there is a copyright belonging to Beck, which the district court must resolve.  Moreover, the appellate court unfortunately was unable to address E3’s argument that Beck should not have a copyright because the language in the report is “functional” and not “expressive.”  The court held that Beck should be able to respond to this argument at the district court.

SDNY judge approves Conergy’s antitrust and breach of contract claims against its wafer supplier MEMC Electronoic Materials, Inc.

August 14, 2009

Today, S.D.N.Y. allowed Conergy to proceed with federal antitrust and breach of contract claims against its wafer supplier, MEMC Electronic Materials, Inc.   Conergy’s Amended Complaint alleges that Conergy had planned to manufacture its own solar wafers before it entered into its the 10-year Wafer Supply Agreement with MEMC in October 2007.  According to its allegations, Conergy was unable to find an acceptable supplier of polysilicon due to the worldwide shortage of polysilicon at the time, and that MEMC’s unique market position allowed it to force Conergy to accept a contract with a non-compete clause.

Defendants MEMC argued that Conergy failed to plead a per se violation of the Sherman Act because Conergy only alleged intent to compete, without also actually showing that it was otherwise prepared to enter the solar wafer market.  However, in her Order, Judge Scheindlin rejected MEMC’s argument.  Noting Conergy will have to make that showing at a later stage in the litigation, she held that  Conergy’s allegation of intent sufficed for the pleadings stage.