Title: Navigating Intellectual Property Challenges in the Renewable Energy Sector
Speakers: Greg Len and Bill Belanger
Greg Len (00:08):
Good morning.
Bill Belanger (00:09):
Morning, Greg.
Greg Len (00:10):
Thanks for being here today.
Bill Belanger (00:12):
Thanks for inviting me.
Greg Len (00:13):
We’ve known each other for almost 20 years and at the time when we first met, I was working at a hydrogen fuel cell company and you hired me to work on an International Trade Commission patent litigation case with technology involving hybrid electric vehicle technology. And that was one of my favorite cases and still one of my fondest memories as an intellectual property attorney, but can you tell us a little bit more about what the ITC is?
Bill Belanger (00:37):
Glad to. And I remember the case well and we have worked together for a number of years. So the International Trade Commission is typically used by US entities that have developed intellectual property to protect their intellectual property against foreign importation. Most typically, the ITC enforces patents, but it can also be used to enforce trade secrets, trademarks, and other types of intellectual property. And the example you gave — that hybrid vehicle case — it was a patented technology that had originally been developed in cooperation with NASA that a small company from Florida was looking to enforce against foreign importations of hybrid vehicle technology.
Greg Len (01:19):
What are some of the remedies that are available at the ITC?
Bill Belanger (01:22):
The most typical remedy is what’s called an exclusion order, and in an exclusion order, US Customs would exclude from importation products that were found to infringe valid US intellectual property. Other remedies would be a cease and desist order, which would prevent the sale in the United States of those products and could also require the destruction of products found to infringe intellectual property. There’s also a remedy called a general exclusion order, which would exclude products that might be from companies other than the defendant. So all products in a category that were found to violate intellectual property.
Greg Len (02:00):
And how do those remedies differ from what’s available in the Federal District Court?
Bill Belanger (02:05):
The most significant difference is money damages are not awarded in the International Trade Commission. And so typically a company would file a case in the International Trade Commission to get injunctive relief and then also file a companion case in district court if they were interested in money damages.
Greg Len (02:23):
Can you tell me what is, in your opinion, one of the most interesting aspects of working in the intellectual property field?
Bill Belanger (02:30):
So for me, I think the most interesting part of our job is to help the clients solve business problems. And so related to the energy industry, an early example in my career, we represented an oil field equipment supplier. And at the time that industry was fairly conservative and they were reluctant to enforce patents against competitors. Our client at the time had invented some novel technology that created huge cost savings for energy suppliers and producers. So they were finding competitors were bidding on common projects using their patented technology. And to help protect their market and achieve their business goals, they retained us to enforce those patents against their competitors.
Greg Len (03:17):
And so what was the outcome of that once you started helping them?
Bill Belanger (03:21):
As I said, our main goal in that was to help them achieve their business goals. And while litigation was a component, the ultimate outcome was we helped them negotiate a comprehensive business agreement with their competitor. It included a supply agreement where they were purchasing requirements from our client, so increasing their supply of products. They were getting components that our client needed as part of that agreement at a discount and they had a broad patent cross license. So it helped them not only in the specific instance that they were initially concerned about, but resulted in a broader business solution that really helped the company succeed.
Greg Len (03:58):
Can you tell me about some examples of working with renewable energy clients?
Bill Belanger (04:02):
Sure. We represented, for a number of years, a small company that was originally founded by a Harvard faculty member and one of his graduate students in order to commercialize something called Black Silicon, which is a way to process silicon in a way that makes it more photoreceptive, so for visible and near infrared light. And typical applications of that technology would be in solar cells and in cameras.
Greg Len (04:27):
And what are some of the services that you provided to that client?
Bill Belanger (04:30):
So we represented that client essentially from startup in developing an intellectual property strategy, which included supporting them in filing patents and in their commercial agreements, including notably a joint venture that they had with a large manufacturing partner early in their operations.
Greg Len (04:49):
What happened once they were working with that joint venture partner?
Bill Belanger (04:53):
Sure. So fast-forward, we were also representing the company in a possible exit and sale of the company. Unfortunately, during diligence for that sale, the potential acquirer identified a number of patents held by a large Japanese company that covered their core technology. Come to find out that that company had filed the patents not from their own development, but as a result of the joint venture working with our client. And so we were retained to file litigation to reacquire ownership of that intellectual property. We represented them through a jury trial in Massachusetts. We were successful, and we were able to reacquire ownership of their intellectual property and that facilitated the ultimate sale of the company.
Greg Len (05:40):
One of my favorite stories is something the inventor and co-founder of the company said to you after he got off the stand at trial. Can you tell me a little bit about that?
Bill Belanger (05:48):
Sure. As I mentioned, our client had about a year of joint development work with this large manufacturing partner. And at the end of that development period, they had told him that his technology didn’t work particularly well and that they weren’t interested in moving forward. During the trial, he was able to see for the first time some of their internal documents, which showed how excited they were with the results that they achieved from his technology and how well it worked. And instead of partnering with him, they decided to continue development themselves. Rather than being angry with that result, he was off the stand and expressed how excited he was that his technology actually worked. And so he was most proud that he had developed something that was of value. I was happy that we were able to help him achieve his goals and really protect his lifetime of work in developing this technology and help him with exiting the company successfully.
Greg Len (06:46):
What do you see as some of the future trends for energy companies in the field of IP?
Bill Belanger (06:51):
I think, particularly in the renewable space, we are going to start to see more patent infringement litigation, not just for core technologies, but also for ancillary technologies elsewhere in the supply chain. A recent example of this we’re seeing in the International Trade Commission — there’s a current case pending where a company based in Tennessee is enforcing patents on electrical connectors for solar cells. So not the solar cells themselves, but the electrical connectors. They’re enforcing those patents in the International Trade Commission against unfair imports from overseas. And I think as the industry matures and as companies have more commercial pressure, we’ll see more examples of those types of cases.
Greg Len (07:37):
Can you tell us a little bit about what you see as the risks and opportunities for companies in the field of IP?
Bill Belanger (07:42):
Generally, the risk and opportunity are two sides of the same coin. For companies that are developing intellectual property, being vigilant that they have a strategy to protect particularly the technologies that differentiate their products from competitors, and not simply focus on the innovative products, but also focus on having a strategy to protect those innovations from essentially copyists who want to shortcut the development cycle and compete with them using their developments. Conversely, companies moving into new technology fields are often unaware of some of the intellectual property risks. And so I think the threat for a company moving into new areas or new technology is to be more aware and mindful of the possible risk of enforcement of intellectual property.
Greg Len (08:33):
Great, Bill. I really appreciate you taking some time to speak with us this morning and look forward to working with you again on another ITC case.
Bill Belanger (08:40):
Thank you for inviting me and hopefully it will be another 20 years before we work on a hybrid vehicle case together.
Greg Len (08:46):
Thank you very much.
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