DCT

7:24-cv-00361

CarbonCharge Tech LLC v. Talafous Favetta

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 7:24-cv-00361, S.D.N.Y., 01/17/2024
  • Venue Allegations: Venue is alleged to be proper in the Southern District of New York because a substantial part of the events giving rise to the claims occurred in the district, including meetings between the named inventors, development of the technology by one of the alleged true inventors (Mr. Rosse), and drafting of the patent applications.
  • Core Dispute: Plaintiff seeks to correct the inventorship of two U.S. patents by removing a deceased named inventor, Mr. Dino A. Favetta, alleging he did not contribute to the conception of the claimed inventions, and to quiet title to the patents.
  • Technical Context: The patents relate to systems and methods for producing biochar—a carbon-rich material derived from biomass—specifically tailored for use in high-performance energy storage components like ultra-capacitors.
  • Key Procedural History: The complaint alleges that the two individuals it claims are the sole true inventors, Dirk-Jan Rosse and James C. Slattery, assigned their rights in the patents-in-suit to Plaintiff CarbonCharge Technologies LLC. This assignment was recorded at the USPTO on April 5, 2023. The lawsuit's primary goal is to remove the third named inventor, Mr. Favetta, which would consolidate full ownership in the Plaintiff.

Case Timeline

Date Event
2011-10-10 Priority Date (filing of '229 Provisional Application)
2016-10-25 U.S. Patent No. 9,478,324 Issued
2018-11-06 U.S. Patent No. 10,121,563 Issued
2023-01-10 Named inventor Mr. Dino A. Favetta dies
2023-04-05 Assignments from Rosse and Slattery to Plaintiff recorded
2024-01-17 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,478,324 - "Systems and Methods for Producing Biochar-Based Products," issued October 25, 2016

The Invention Explained

  • Problem Addressed: The patent addresses the need for improved materials for large-scale electrical energy storage, noting the limitations of existing materials like graphite used in ultra-capacitors, including toxicity and monotonic structure (Compl. ¶¶29, 30; ’324 Patent, col. 1:41-61).
  • The Patented Solution: The patent discloses a method for creating a "net-shaped" biochar material from selected plant matter. The process involves mechanically converting the plant material, shaping it into "wafers," and then charring it in a furnace. A key aspect is that the specific plant material selected obviates the need for additives, as it naturally generates free-radical ions of alkali metals during charring to create the necessary pores for charge storage (Compl. ¶37; ’324 Patent, Abstract; col. 4:20-41). This allows the final product's properties to be "tuned" for specific applications (’324 Patent, col. 2:1-7).
  • Technical Importance: The technology proposes a "green" and renewable alternative to mined carbon compounds, using biomass feedstock that can be grown and harvested rather than extracted, to produce high-performance energy storage components (’324 Patent, col. 2:8-19).

Key Claims at a Glance

  • The complaint focuses on the subject matter of the patent as a whole, with specific reference to independent Claim 1 (Compl. ¶¶37, 75-77).
  • Independent Claim 1 recites a method with the following essential elements:
    • selecting plant material for use in generating biochar;
    • mechanical conversion of the plant material to form a material with a fibrous consistency;
    • shaping the converted material into a pre-shaped condition defining wafers; and
    • charring the wafers in a furnace to generate net-shaped biochar wafers, wherein the process is performed without additive compounds because the plant material itself generates sufficient free-radical ions to create pores.
  • The complaint does not explicitly reserve the right to assert dependent claims but notes that Dependent Claim 10 recites using the wafers as an "ultra-high capacitor or a battery component" (Compl. ¶39).

U.S. Patent No. 10,121,563 - "Systems and Methods for Producing Biochar-Based Products," issued November 6, 2018

The Invention Explained

  • Problem Addressed: As a continuation of the '324 Patent, the '563 Patent addresses the same technical problem of creating improved, renewable materials for energy storage applications (Compl. ¶¶29-30; ’563 Patent, col. 1:21-40).
  • The Patented Solution: The '563 Patent claims a similar method of processing plant-based biomaterials but adds a final step. After selecting, mechanically converting, pre-shaping, and charring the material to retain a "desired net-shape," the method includes the additional step of "fabricating at least one end-product from the net-shaped biochar material" (Compl. ¶41; ’563 Patent, Claim 1). The process is designed to produce a material that can be "tuned and tailored" for specific end-use performance requirements (’563 Patent, col. 16:1-8).
  • Technical Importance: This invention builds on the prior patent by explicitly claiming the integration of the custom-produced biochar into a final manufactured component, reinforcing the end-to-end nature of the disclosed system (’563 Patent, Abstract).

Key Claims at a Glance

  • The complaint focuses on the subject matter of the patent as a whole, with specific reference to independent Claim 1 (Compl. ¶¶41, 81-83).
  • Independent Claim 1 recites a method with the following essential elements:
    • selecting plant material based on predetermined criteria;
    • mechanical conversion of the selected plant material;
    • pre-shaping the mechanically converted plant material to a desired net-shape;
    • charring the pre-shaped material in a furnace to generate biochar material; and
    • fabricating at least one end-product from the net-shaped biochar material.
  • The complaint notes that Dependent Claim 9 adds the limitation of "using the end-product as an ultra-high capacitor or a battery component" (Compl. ¶43).

III. Analysis of Inventorship Allegations

This action is for correction of inventorship, not patent infringement. The central dispute is whether the deceased Mr. Dino A. Favetta made an inventive contribution to the subject matter claimed in the Biochar Patents.

  • Plaintiff's Position on Inventorship: The complaint alleges that Mr. Dirk-Jan Rosse and Mr. James C. Slattery are the "only true inventors of the entire subject matter claimed in the Biochar Patents" and that Mr. Favetta made "no contribution" (Compl. ¶73).
  • Alleged Contribution of Mr. Rosse: The complaint asserts that Mr. Rosse, a trained agricultural engineer, conceived of the core process for creating the biochar. Through "careful trial and error," he allegedly identified optimal plant feedstocks (e.g., Goldenrod), growing conditions, and processing steps to create a biomass material that would hold its shape after being converted into biochar, a key feature of the claimed invention (Compl. ¶¶46-50). The complaint alleges Mr. Rosse had conceived of and reduced to practice an "end-to-end system" for producing biochar from raw biomass before meeting Mr. Favetta (Compl. ¶59).
  • Alleged Contribution of Mr. Slattery: The complaint credits Mr. Slattery, an electrical engineer, with conceiving of the specific application of Mr. Rosse's biochar for energy storage. He allegedly recognized that the "net-shaped biochar process" created additional surface area that could be used for charge storage, and he "proposed fabricating a capacitor using the materials generated by Mr. Rosse" (Compl. ¶56). This aligns with claim limitations directed to use in capacitors and batteries (Compl. ¶¶39, 43).
  • Alleged Non-Contribution of Mr. Favetta: The complaint portrays Mr. Favetta's role as non-inventive. It alleges he had "little to no experience" with the relevant technologies, such as pyrolysis or electrical storage devices (Compl. ¶61). His role is characterized as a "pair of hands" who transferred biochar samples produced by Mr. Rosse for testing (Compl. ¶60). The complaint further alleges that Mr. Favetta admitted in writing that he had "contributed nothing to the technology" and that the "true IP" was Mr. Rosse's (Compl. ¶62).

No probative visual evidence provided in complaint.

IV. Key Claim Terms for Construction

While this is not an infringement case, the definition of key claim terms will be central to determining what the invention is and who conceived of it.

  • The Term: "net-shaped biochar" ('324 Patent, Claim 1) / "desired net-shape" ('563 Patent, Claim 1).

    • Context and Importance: This term appears to be the core of the physical product created by the claimed methods. The inventorship analysis will likely focus on who first conceived of a process that could produce a biochar material that retains its form after charring. The plaintiff alleges that Mr. Rosse's key discovery was that certain biomass processing created material that "did not hold its shape," leading him through trial and error to the claimed invention (Compl. ¶48).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claims themselves describe the process broadly as "shaping" and "charring" to generate the "net-shaped" product. This could suggest the term encompasses any resulting biochar that generally holds its form.
      • Evidence for a Narrower Interpretation: The specification defines "Net-Shaping" more precisely as a processing method wherein "any subsequent changes that occur to it (such as shrinkage, such as swelling, such as curvature, etc.) in the transformation... are pre-calculated, expected, and anticipated" (’563 Patent, col. 4:65-col. 5:4). This suggests a more complex, engineered process, and inventorship would attach to the person who conceived of this specific, controlled transformation.

  • The Term: "wherein the plant material obviates the need for additive compounds" ('324 Patent, Claim 1).

    • Context and Importance: This negative limitation distinguishes the invention from prior art that may have required chemical additives. Practitioners may focus on this term because inventorship will depend on who conceived of the idea that a specific type of plant material could, on its own, generate the necessary "free-radical ions of alkali metals" to create a porous structure during charring (Compl. ¶37).
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim language is absolute: the process is performed "without additive compounds." This could be read broadly to mean simply omitting any added chemicals.
      • Evidence for a Narrower Interpretation: The specification links this feature to a specific mechanism: the natural alkali metal content in the plant material entering an "ionic vapor state" to act as a "free-radical and chemical reaction initiator" (’324 Patent, col. 7:20-30). Inventorship would likely be tied to the conception of this specific chemical mechanism, not just the general idea of not using additives.

V. Allegations Regarding Patent Prosecution and Ownership

The complaint contains significant allegations regarding the circumstances of the patent filing and prosecution, which form the basis for the inventorship challenge.

  • The complaint alleges that Mr. Favetta "controlled the preparation and filing" of the patent applications and "interposed himself between the two co-inventors and the prosecuting patent attorney" (Compl. ¶64).
  • It is alleged that Mr. Favetta "dictated the order in which the inventors were listed," placing himself first without consulting the others (Compl. ¶67).
  • Plaintiff claims that the true inventors, Messrs. Rosse and Slattery, were "generally kept out of the loop" and were not aware of the legal significance of the inventorship determination made by Mr. Favetta and the attorney (Compl. ¶¶64, 72).
  • The dispute over ownership arises directly from this alleged incorrect inventorship. Because Mr. Favetta is listed as a co-inventor, his heir (the Defendant) holds purported ownership rights, preventing the Plaintiff from having clear and entire title to the patents (Compl. ¶¶88-90).

VI. Analyst’s Conclusion: Key Questions for the Case

The resolution of this case will likely depend on the court's findings on the following central questions:

  1. Evidentiary Proof of Conception: Can the Plaintiff produce clear and convincing evidence, such as corroborated lab notebooks, emails, or other contemporaneous documents, to overcome the strong legal presumption that the inventors named on the issued patents are correct? The court will need to determine who conceived of the "definite and permanent idea of the complete and operative invention" for each patent claim.
  2. Contribution vs. Facilitation: A key factual question will be whether Mr. Favetta's alleged activities—such as managing the patenting process, seeking to commercialize the technology, or transporting samples—rose to the level of a conceptual contribution to the invention as claimed. The law distinguishes between conception, which confers inventorship, and activities that merely reduce an invention to practice or facilitate its development.
  3. Scope of Individual Contributions: The analysis of inventorship is performed on a claim-by-claim basis. To be removed, the court must find that Mr. Favetta did not contribute to the conception of a single claim in either patent. A core question will be whether the evidence shows Mr. Favetta conceived of any element or combination of elements in any claim, which would validate his status as a co-inventor.