Patent Law

The following is excerpted from a September 24, 2009 Bloomberg article by Susan Decker and Alan Ohnsman:

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.

The parties ?continue to engage in ongoing settlement discussions that may resolve the issues in dispute in this matter,? A123 said in a Sept. 15 court filing. Shares of the Watertown, Massachusetts-based company soared 50 percent in the first day of trading on optimism A123 will benefit from the U.S. push for battery-powered vehicles.

The university, located in Austin, and Hydro-Quebec, Canada?s largest utility, sued A123, Black & Decker Corp. and China BAK Battery Inc. in 2006, claiming the companies were using school inventions in Black & Decker?s DeWalt cordless power tools. A123 sued Hydro-Quebec, seeking to invalidate the patents or get a ruling the inventions weren?t used in A123?s battery technology.

Both cases were put on hold while the U.S. Patent and Trademark Office reviewed the patents. The patents were reissued with some alterations. The companies are fighting over whether the dispute, if revived, should be handled in federal court in Dallas, where the university?s suit was filed, or in Boston, where A123 sued Montreal-based Hydro-Quebec.

In a Sept. 22 regulatory filing, A123 said it could be forced to pay ?substantial damages? if the case isn?t resolved in its favor.

The University of Texas wants to amend the complaint to reflect changes that were made during the patent office review process. A123?s Sept. 15 filing was to seek more time to respond to that request.

The university said its technology related to rechargeable lithium iron-phosphate batteries was developed by John Goodenough, a scientist and professor working at the school?s material science and engineering department.

In a related story about Dr. Goodenough:

The University of Texas at Austin engineering Professor John Goodenough, who developed materials critical to the development of lightweight and rechargeable lithium-ion batteries, ushering in the wireless revolution, has been awarded the Enrico Fermi Award, one of the most distinguished science and technology honors given by the White House.

Goodenough will share the presidential honor with Stanford University's Siegfried S. Hecker. Each will receive a gold medal and share the $375,000 honorarium. Both will be honored at a ceremony in Washington, D.C. at a later date. The award is administered on behalf of the White House by the U.S. Department of Energy.

Thanks to the reader who alerted me to both stories.