Court rules several GS Cleantech patents unenforceable

By Erin Voegele | September 22, 2016

One Sept. 15, the U.S. District Court for the Southern District of Indiana issued an order finding problems with certain GS CleanTech Corp. patents that are subject to multiple lawsuits filed by the company against many ethanol plants and technology providers. GS CleanTech is a subsidiary of GreenShift Corp.

According to information released by ICM Inc., the court specifically found that several of GS CleanTech’s corn oil patents, including U.S. Patent Nos. 7,601,858; 8,008,516; 8,008,517; and 8,283,484, are unenforceable because of the inequitable conduct of the investors and their attorney’s in prosecuting the patents before the U.S. Patent and Trademark Office. A statement issued by GreenShift explains that the court ruled the patents are unenforceable because of inferences that its investors and attorneys engaged in inequitable conduct by knowingly withholding material information with an intent to deceive the USPTO.

The court previously issued an order in November 2014 finding these patents and other to be invalid and not infringed. ICM also indicated that in a separate order issued on Sept. 15, the judge also dismissed with prejudice all cases against all ethanol plants and other defendants filed by GS CleanTech.

"ICM is very pleased with the new rulings by the federal court. ICM identified early in the litigation that the inventors filed a false declaration before the USPTO and failed to correct it properly. We believed that GS CleanTech and their attorneys also withheld material information from the USPTO in the prosecution of certain patents. Obviously, the court agreed with us," said Brian Burris, attorney for ICM. "ICM will vigorously defend any appeal that may be filed by GS CleanTech," Burris concluded.

Chris Mitchell, president of ICM, said, "This is a big win for those in the ethanol industry who purchased oil extraction technology and the technology providers. The perseverance of ICM and the codefendents in defending this case was resolute.  We are pleased in the positive outcome for us and the plants that purchased our Base Tricanter Systems and Advanced Oil Systems. 

In its statement, GreenShift said that the rulings are appealable. “We disagree with the court’s conclusions in each ruling and believe that each decision relied heavily on an erroneous determination that the inventions were reduced to practice in 2003 as a result of limited, small-scale bench testing,” said GreenShift. The company also said it is eager to mount its appeal.