Hearing set for patent lawsuit in GreenShift corn oil case

By Holly Jessen | August 11, 2011

A hearing has been set for Aug. 22 in a patent litigation case. GreenShift Corp. will face its defendants and counterclaimants in the consolidated case in U.S. District Court in the Southern District of Indiana before Judge Larry McKinney.

GreenShift Corp. and its subsidiary, GS CleanTech Corp., are suing 15 ethanol plants in Illinois, Indiana, Iowa, Minnesota, Wisconsin and North Dakota for allegedly infringing on its patented corn oil extraction technology.

Also being sued are ICM Inc., GEA Westfalia Separator Inc., GEA Mechanical and Flottweg Separation Technology Inc. GreenShift has also named Dave Vander Griend, president and CEO of ICM, personally, and is considering infringement suits against additional companies, Kevin Kreisler of GreenShift told EPM. Listed as counterclaimants in the case are Flottweg, Adkins Energy LLC, Bushmills Ethanol LLC, Heartland Corn Products, Chippewa Valley Ethanol Co. LLLP, United Wisconsin Grain Producers LLC and Al-Corn Clean Fuel.

On July 25 GreenShift announced that the U.S. Patent and Trademark Office had issued a notice of allowance for a patent titled “Method of Processing Ethanol Byproducts and Related Subsystems.” GreenShift pointed out that this was granted after a review of materials and arguments submitted in the litigation by ICM, Flottwegg, Westfalia, Cardinal Ethanol and Big River Resources. “GreenShift believes that the allowance of the '231 Patent Application by the USPTO in spite of everything raised by each and every defendant significantly increases the strength of GreenShift’s legal position and provides further substantial confirmation of the validity of GreenShift’s patents,” the company said.

ICM followed up on Aug. 9, saying it is continuing to offer corn ethanol plants solutions for removing corn oil from stillage streams. In fact, the company recently filed a non-provisional patent application with the patent office for its trademarked Advanced Oil System. It also mentioned the first commercial deployment of the technology. In addition, it’s still offering its Tricanter Oil Separation system to ethanol plants.  

Although the company typically doesn’t comment on current litigation, it felt compelled to respond and clarify statements made by GreenShift. Brian Burris, general counsel of ICM, called it a mischaracterization by GreenShift that the notice of allowance for the patent confirms the validity of any of its patents. “The [patent office] does not determine the validity of issued patents—federal courts do,” he said. The company added it is confident that GreenShifts patents will be declared invalid. Further, ICM believes that after a proper interpretation of the patents’ claims it will be found that the Tricanter Oil Separation System design and system does not infringe on GreenShifts patents.

On the other hand, GreenShift said any feeling that its patents would be declared invalid is misguided. So too, it said, are offers of indemnity. “Such offers irresponsibly imply the ability to pay damages that continue to accrue against infringing plants. These plants are taking a dramatic risk that an indemnitor is able to repay all damages assessed by the court against each infringing plant that has been indemnified.”

The following are the 15 ethanol plants named in the GreenShift lawsuits.

1. Big River Resources West Burlington LLC, West Burlington, Ill.
2. Lincolnland Agri-Energy LLC, Palestine, Ill.
3. Cardinal Ethanol LLC, Union City, Ind.
4. Iroquois BioEnergy Company LLC, Rensselear, Ind.
5. Amaizing Energy LLC, Denison, Iowa
6. Big River Resources Galva LLC, Galva, Iowa
7. Lincolnway Energy LLC, Nevada, Iowa
8. Al-Corn Clean Fuel LLC, Claremont, Minn.
9. Bushmills Ethanol Inc., Atwater, Minn.
10. Chippewa Valley Ethanol Co. LLLP, Benson, Minn.
11. Heartland Corn Products LLC, Winthrop, Minn.
12. Blue Flint Ethanol LLC, Underwood, N.D.
13. ACE Ethanol LLC, Stanley, Wis.

14. Adkins Energy LLC, Lena, Ill.

15. United Wisconsin Grain Producers LLC, Friesland, Wis.