October 2009 Predicting The Future Of Patent Litigation In The Renewable Energy Field

2 James R. Klaiber Milbank, LLP James R. Klaiber is a registered patent attorney and special associate in the Intellectual Property Group of the Litigation Department of Milbank. His practice is focused on patent litigation, including energy-efficient telecommunication and display devices. He is a former AT&T Bell Laboratories Member of Technical Staff, where his work included research and development of low-power optical amplifiers and high-energy-density batteries. He has mechanical engineering degrees from MIT, the University of California at Berkeley, and the University of Michigan, and his law degree is from Fordham University Law School.

3 Green Technology – Fad or the Future? Everyone ’ s Going Green – and The U.S. Government and Private Funds Are Ready to Spend –Obama: $3B for renewable energy projects, $2.4B for batteries and electric drive components –Infinia raises $50M (solar), Trilliant raises $40M (power grid) Startups are flourishing … But many seemingly new green technologies are already well established –wind and hydropower technologies –solar energy technologies –hydrogen and fuel cells –green vehicle technologies, –Biofuels –green information technology

4 Wind Power Example Tower and Turbine ~ 1000 patents or applications

5 Example Wind-Power Patent Litigations US Windpower – Kenetech – Zond – GE enforcement against Enercon (ITC) Southwest Windpower enforcement against Aeromax (Arizona U.S. District Ct.)

6 US Windpower – Kenetech – Zond – GE Litigation History U.S. Windpower Inc. files patent application for Variable Speed Wind Turbine ‘039 patent issues Kenetech buys ‘039 patent Kenetech asserts ‘039 patent against Enercon at International Trade Commission (ITC) ITC finds Enercon infringes‘039 patent

7 US Windpower – Kenetech – Zond – GE Litigation History (Cont ’ d) Zond Energy Systems buys ‘039 patent Federal Circuit affirms ITC decision, Enercon enjoined from importing infringing products into US until ‘039 patent expires in GE buys ‘039 patent GE asserts ‘039 patent and 2 other GE patents against Mitsubishi in ITC –(U.S. Pat. Nos. 6,921,985 & 7,321,221) ‘039 patent will expire By Other 2 GE patents will expire

8 US Windpower – Kenetech – Zond – GE Litigation – Recent Developments August ALJ for the ITC issues an initial determination (“ID”) finding Section 337 violations (infringement) of the ‘039 and the ‘985 patents. –The ‘221 patent is found not violated, but its validity is upheld. Aug. 24, The ITC’s Office of Unfair Import Investigations, representing the public interest, disagrees with the ALJ’s findings and files a petition for a full commission review of the initial determination. Oct. 2, letter to the ITC from Sens. Blanche Lincoln, D-Ark., and Ron Wyden, D-Ore., urges the ITC to take a second look at the ID in light of the anticipated spike in demand for renewable energy technology

9 Southwest Windpower Litigation History 1988 – ‘939 patent granted for wind driven electric current producer 2004 – ‘718 patent granted for wind turbine controller 2006 – Southwest Windpower files lawsuit against Aeromax in District of Arizona alleging infringement of ‘939 and ‘718 patents 2008 – Summary Judgment of infringement for Southwest Windpower - $980K damages

10 Is the Renewable Energy Industry Today in the Early Stages of an Intellectual Property “ Arms Race ” ?

11 New Wind Power Patent Filings (class 290/44) ITC begins (Enercon) ITC ends (injunction ) Fed Cir AffirmsREpower – GE license GE buys ITC patent

12 Who owns Wind-Power Patents

13 How will Renewal Energy companies deal with IP issues in 5, 10, 15 years? Is there a more “mature” industry from which the renewable energy industry can learn?

14 Lessons For Renewable Energy Field From More Than Twenty Years of Licensing and Litigation in the Semiconductor Industry

Court of Appeals Federal Circuit Established 1985 TI & 1986 Polaroid Patent Litigations New Patent Filings in Semiconductor Industry

16 The Semiconductor Industry Built Patent Portfolios Litigation Settle Litigation with Licensing – Cross Licensing

17 Leftovers From The Internet Bubble Many patent applications filed by startup web- based commercial enterprises Many of the entities that filed these applications are now defunct Recent rise in lawsuits by non-practicing entities (“trolls”?), notably in the Eastern District of Texas, asserting e-commerce patents Are we going to see a similar rise and fall in green technology?

18 Thank you! Many thanks to Michael T. Nguyen of Fenwick & West for his assistance in the preparation of these materials and the accompanying paper. Much gratitude to Chris L. Holm and others in Milbank’s Intellectual Property Group for compiling the data and preparing the charts in this presentation.