January 29, 2003

Venable Successfully Asserts Valuable Patent for Ecolochem, Inc.

3 min

January 29, 2003 - Venable saw another patent litigation through to a successful conclusion when earlier this month long-standing client Ecolochem, Inc. reached a settlement in its patent infringement litigation against Southern California Edison Co. regarding Ecolochem’s commercially successful patent for producing deoxygenated ultra-pure water.

Venable attorneys Clifton McCann, Andrew Aitken and David Sellinger represented Ecolochem. Clif and Andy represented Ecolochem throughout all stages of the ten-year-long litigation, including a successful appeal to enforce Ecolochem's patent that paved the way for the settlement. David joined Clif and Andy to represent Ecolochem at the damages phase of trial. John Clark, who attended the trial, and Janet Satterthwaite, David Farnum, Davida Isaacs, Mary Calkins, Shipra Sharma and many others made important contributions to Ecolochem’s success.

Ecolochem obtained the patent in suit on its process for removing dissolved oxygen from water, commercially known as the DEOX® Process, in 1989. The process was warmly received by power plant operators to help fight corrosion, including Southern California Edison, which used the process and refused to pay royalties. Ecolochem filed suit in 1992, and the case was tried in 1997-98 on liability issues in the U.S. District Court in Los Angeles, where Ecolochem was able to prove that Edison had willfully infringed Ecolochem's patent. The court held that the patent was invalid, however, and therefore denied Ecolochem any recovery.

Ecolochem achieved a major victory in 2000, when the U.S. Court of Appeals for the Federal Circuit unanimously reversed the lower court’s decision regarding invalidity and upheld Ecolochem's exclusive patent rights. Ecolochem, Inc. v. Southern California Edison Company, 227 F.3d 1361 (Fed.Cir. 2000), cert. den., 121 S.Ct. 1607. Edison agreed to a settlement after the lower court’s determination on remand, following the damages trial last summer, that Ecolochem was entitled to recover damages in the nature of an increased patent royalty, with interest, as well as enhanced damages and attorneys’ fees due to the willful nature of the infringement.

The Edison case is the third infringement litigation successfully prosecuted for Ecolochem to enforce its patent protection for the DEOX® Process. Clif, Andy, and Richard Aitken represented Ecolochem in two prior lawsuits involving Ecolochem’s competing suppliers of water treatment services. In addition to utilities, Ecolochem provides the DEOX® Process to customers in the chemical, electronics, and pulp and paper industries.

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