Green Patents: Judge Rejects Enablement Defense in Case Involving Bioremediation Patents

On May 19th, in a case involving alleged infringement of bioremediation patents, Judge Jack T. Camp of the US District Court for the Northern District of Georgia granted summary judgment to Plaintiff ChemFree Corporation with regard to Defendant J. Walter Inc.’s enablement defense, holding that:

“[T]he undisputed evidence in this case indicates that it would not have required undue experimentation for a person of ordinary skill in the art to make and use the patented parts washer in 1994. Although the specifications do not describe the process in detail, one of ordinary skill in the art would have either known the procedures to follow or been able to conveniently acquire the necessary information.”

The use of bioremediation has grown increasingly popular since the adoption of the Montreal Protocol in 1989, which phased out ozone-depleting substances commonly used in cleaning products. For example, the US Environmental Protection Agency has reportedly been using a bacteria at a Superfund site in New Jersey to clean up trichloroethylene that had contaminated local drinking water.

ChemFree filed its suit against Walter in 2004, alleging infringement of four patents involving systems and methods for cleaning contaminants from machine parts in an environmentally friendly manner. ChemFree’s patents cover its SmartWasher product, which uses microbes to break down grease, oil, and other contaminants into non-hazardous by-products such as carbon dioxide and water.

Walter argued that the patents’ specifications failed to provide enough detailed information to allow a person having ordinary skill in the art to create the patented device without undue experimentation. Specifically, Walter claimed that a person having ordinary skill in the art would not be able to determine the appropriate “cleaning fluid and microorganism combination” to use without conducting undue experimentation. Finding that the specifications did provide enough guidance for a person having ordinary skill in the art, Judge Camp concluded that “the experimentation necessary to practice the invention in 1994 would not have been complicated or unduly time-consuming, the level of ordinary skill in the art was high at the time, the patents included a working example, and the art of using biodegrading microorganisms was well-established in 1994.”

This case is one of an increasing number of lawsuits involving so-called “green” patents, which have coincided with the rise in the issuance of “green” patents.