Justia Energy, Oil & Gas Law Opinion SummariesArticles Posted in Patents
David Netzer Consulting, LLC v. Shell Oil Co.
Netzer owns the 496 patent, entitled “Process for the Coproduction of Benzene from Refinery Sources and Ethylene by Steam Cracking,” which describes a process for the coproduction of ethylene and purified benzene from refinery mixtures. The district court entered summary judgment of noninfringement. The court did not formally construe the claims, but, implicitly agreed with defendant (Shell) that “fractionating” does not include extraction. The court found no literal infringement, reasoning that “Netzer’s method does not include extraction and does not yield benzene of 99.9% purity” and that “[t]o infringe, Shell would have to eliminate the extraction step and still produce benzene purified to at least 80%.” The court also found no infringement under the doctrine of equivalents because Netzer is barred by “specific exclusion, prosecution-history estoppel, and prior art.” The Federal Circuit affirmed; no reasonable jury would find that the accused process performs substantially the same function in substantially the same way to obtain substantially the same result. View "David Netzer Consulting, LLC v. Shell Oil Co." on Justia Law
WesternGeco L.L.C. v. Ion Geophysical Corp.
WesternGeco’s patents relate to technologies used to search for oil and gas beneath the ocean floor. Ships tow long streamers equipped with sensors. An airgun bounces sound waves off of the ocean floor. The sensors pick up the returning sound waves and create a map of the subsurface geology to aid in identifying drilling locations. The streamers can be miles long and can tangle or drift apart, resulting in distorted maps. The patents relate to controlling the streamers and sensors in relation to each other by using winged positioning devices and generating four-dimensional maps with which it is possible to see changes in the seabed over time. WesternGeco manufactures the Q-Marine, and performs surveys for oil companies. ION manufactures the DigiFIN, and sells to its customers, who perform surveys for oil companies. WesternGeco filed suit. A jury found infringement and no invalidity and awarded $93,400,000 in lost profits and $12,500,000 in reasonable royalties. The Federal Circuit affirmed, rejecting arguments that WesternGeco was not the owner of the patents and lacked standing and that the court applied an incorrect standard under 35 U.S.C. 271(f)(1). The court upheld denial of enhanced damages for willful infringement and reversed the award of lost profits resulting from conduct occurring abroad. View "WesternGeco L.L.C. v. Ion Geophysical Corp." on Justia Law
Danisco U.S. Inc. v. Novozymes A/S, Inc.
Danisco and Novozymes compete as suppliers of Rapid Starch Liquefaction products, genetically modified industrial enzymes that convert plant-based material into ethanol. They have patents that claim α-amylase enzymes, genetically engineered through substitution of amino acids in the peptide sequence to improve liquefaction performance. Novozymes has sued Danisco several times. Once Novozymes amended a pending patent application to claim one of Danisco’s new products, and sued Danisco the same day that the patent issued. Danisco owns the 240 patent, issued 2011 and claiming priority from a 2008 provisional application, claiming a variation for increased viscosity reduction in a starch liquefaction assay; it is the active ingredient in Danisco’s RSL products. After the PTO issued a Notice of Allowance, Novozymes amended a pending application to claim the enzyme, and contested entitlement to priority, arguing that its amended claim covered the same invention as the 240 patent. After Danisco’s 240 patent issued, Novozymes requested continued examination and made comments about its refusal to “acquiesce.” Upon issuance of Novozymes’s 573 patent, Danisco sought declaratory judgments that its products did not infringe and that the 573 patent was invalid, or that its 240 patent had priority under 35 U.S.C. 291. The district dismissed, acknowledging that Novozymes’s 573 patent presented a substantial risk to Danisco, but that Danisco’s action was filed before Novozymes could take action to enforce its rights. The Federal Circuit reversed, holding that the totality of the circumstances established a justiciable controversy. View "Danisco U.S. Inc. v. Novozymes A/S, Inc." on Justia Law
Butamax(TM) Advanced Biofuels v. Gevo, Inc.
Butamax owns the 188 patent, which covers a recombinant microbial host cell that uses a particular biosynthetic pathway to produce isobutanol, which is useful as a fuel or fuel additive, and the 889 patent, which issued from a divisional of the 188 patent’ application and focuses on a method of producing isobutanol from a recombinant yeast microorganism that expresses a five-step biosynthetic pathway. The patents’ specifications largely are identical. The district court rejected Butamax’s claim of literal infringement and granted Gevo summary judgment of noninfringement under the doctrine of equivalents of the asserted claims and of invalidity of claims 12 and 13 of the 889 patent for lack of written description, and invalidity of claims 12 and 13 of the 889 patent for lack of enablement. The Federal Circuit vacated. The district court erred in its claim construction and determination under the doctrine of equivalents and failed to recognize the existence of genuine issues of material fact. The court reversed summary judgment of invalidity for lack of enablement because that judgment appeared to have been a scrivener’s error.View "Butamax(TM) Advanced Biofuels v. Gevo, Inc." on Justia Law
Gen. Elec. Co. v. Wilkins
Lightning strikes and animal contacts can cause wires of the power grid to short. Such “low voltage events” can damage wind turbines, which previously disconnected from the grid during a low voltage event. As wind began providing a greater percentage of overall power, utilities began to require low voltage ride-through. GE’s 985 patent, directed to controlling components of a wind turbine that would allow it to remain connected to the grid and to safely ride through a low voltage event, names five co-inventors who were based in Germany. Wilkins is not named. Wilkins was involved in adapting wind turbines to meet certain requirements in the U.S. The German team consulted Wilkins for confirmation that their invention would work with U.S. grid. Wilkins left GE in 2002. The 985 patent is asserted by GE against Mitsubishi in several lawsuits. Mitsubishi challenged the validity of the patent and hired Wilkins, who worked 1,000 hours in an effort to invalidate the 985 patent. Mitsubishi also argued that the patent was unenforceable because GE intentionally failed to name Wilkins as a co-inventor. The administrative law judge found that Wilkins had co-invented the patent but that GE did not intend to deceive the PTO. Later, Wilkins asserted ownership rights in the 985 patent and another patent. Wilkins entered into additional agreements with Mitsubishi and was paid more than $1.5 million. GE sought to quiet title to the patents. Wilkins counterclaimed. After refusing to take an unqualified oath to tell the truth at his deposition, behavior that the court deemed “not acceptable,” Wilkins filed a declaration calling the court “ignorant.” The district court dismissed GE’s ownership claims as time-barred and held that Wilkins and Mitsubishi failed to establish that Wilkins co-invented any claim of the 985 patent. The Federal Circuit affirmed, noting that Wilkins had filed additional claims for malicious prosecution and abuse of process against GE and its counsel. View "Gen. Elec. Co. v. Wilkins" on Justia Law
Preston v. Marathon Oil Co.
A subsidiary of Marathon hired Preston as a relief pumper in Marathon’s coal bed methane well operation. After beginning work, Preston signed an Employee Agreement containing the assignment at issue. Later, Preston worked with Marathon Engineer Smith on a baffle system to improve machinery used to extract methane gas from water-saturated coal in a coal bed methane gas well. Marathon installed the system on wells. After Preston’s employment ended, both Marathon and Preston pursued patents. The district court declared that Preston is the sole inventor of one patent and that Smith was misjoined as an inventor; ordered the PTO to issue a new certificate reflecting Preston as the sole inventor; declared Marathon the owner of other patents pursuant to the employment agreement and that Preston breached the agreement for failing to assign his rights. The court entered summary judgment in favor of Marathon on its shop right claim, finding that, even if Marathon did not own the patents, it had a shop right to practice the inventions. The Federal Circuit affirmed that Preston assigned his rights in two inventions to Marathon pursuant to his employment agreement. Because that assignment was automatic, there was no breach of that agreement. View "Preston v. Marathon Oil Co." on Justia Law
Gen. Elec. Co. v. Int’l Trade Comm’n
On GE’s complaint, the International Trade Commission conducted an investigation and, rejecting the findings of an ALJ determined that GE's 039 patent was not invalid by reason of obviousness or written description, that variable speed wind turbines imported by Mitsubishi do not infringe any of GE's patents, and that the domestic industry requirement is not met as to any of the patents. The Commission concluded that the Tariff Act, 19 U.S.C. 1337, was not violated. The 039 patent subsequently expired. The Federal Circuit affirmed that the 221 patent is not infringed, but reversed the determination of no domestic industry as to the 985 patent, and remanded. View "Gen. Elec. Co. v. Int'l Trade Comm'n" on Justia Law