Active air dam for vehicle; Dynalloy, Inc. and GM Global Tech. Op., Inc.; U.S. Pat. No. 7,775,582

U.S. Patent No. 7,775,582, issued on August 17, 2010 to Dynalloy, Inc. of Costa Mesa, CA and GM Global Technology Operations, Inc. of Detroit, MI, discloses an air dam actuated by an active material for use in a vehicle.

Air dams are designed to reduce an automobile’s aerodynamic drag, e.g., for improved fuel efficiency or speed (e.g., for race cars).  The air dam reduces drag by deflecting air flow away from underneath the car where it can create turbulence due to interactions with the irregular surfaces of the car’s undercarriage.  However, because air dams are close to the ground, they often end up getting damaged by inadvertent contact with the ground, resulting in repair/replacement costs.  There have been previous designs for adjustable air dams with variable ground clearance and that can be selectively used and stowed, but the ’582 patent describes these designs as having complex mechanisms. 

The ’582 patent discloses a pivotally deployable air dam that uses materials that exhibit a reversible physical change in response to an external signal (termed “active materials”).  For example, shape memory alloys are a class of active material that can be deformed but that return to their original shape when subjected to a predetermined temperature.  The ’582 patent describes various active materials, and various configurations using these active materials, that are compatible with use in an air dam system.

According to its website, Dynalloy’s core business is manufacturing wires made of NiTi-based shape memory alloys under the trademark Flexinol®.  In contrast to normal wires which expand by fractions of a percent when heated (due to a positive coefficient of thermal expansion), Flexinol® wires contract (typically by 2-5%) in length when heated above the phase transformation temperature.  This heating can be created by running a current through the wire itself.  This contraction can be sufficiently strong to have the Flexinol® wires replace small motors or solenoids, resulting in smaller, cheaper designs for a variety of applications.  For example, Flexinol® wires have been used in NASA’s Mars Pathfinder rover, as well as in electronics, medical devices, and toys and novelties. 

The ’582 patent is a good example of the concept of joint ownership of a U.S. patent.  Under U.S. patent law, the inventors are the original owners of a patent or patent application (i.e., ownership follows inventorship), and the inventors can assign their ownership rights to another person or legal entity.  Also under U.S. patent law, in the absence of an agreement to the contrary, each of the joint owners of a patent may make, use, sell or offer to sell, or import the patented invention in the U.S. without the consent of and without accounting to the other owners.  In other words, each of the joint owners can practice the claimed invention, or can license the patent to someone else, without getting permission from the other owners and without paying anything to the other owners. 

Companies are typically diligent in obtaining ownership of patents or patent applications invented by their employees, e.g., via the employment agreements of the inventors and/or through specific assignment agreement signed by all the inventors.  Thus, even when there are multiple employee-inventors, each of them typically assigns his/her ownership rights to the company, which then becomes the sole owner of the patent or patent application.  Mischief can result when a company does not nail down its ownership rights from all the inventors, since an inventor that has not assigned his/her rights remains an equal joint owner of the patent.  There are numerous instances in which a patent infringer discovers that the presumed patent owner did not obtain the rights of all the inventors, and then rushes to get a license to practice the claimed invention from the newly-discovered joint owner.

Presumably, the ’582 patent is the result of a collaboration between Dynalloy and General Motors (GM), since the inventors listed on the ’582 patent appear to include both Dynalloy personnel and GM personnel.  Each of the inventors presumably assigned their ownership rights to their respective employers.  As a result, the ’582 patent is owned jointly by both Dynalloy and GM.  As joint owners under U.S. patent law, both companies have the right to practice the invention claimed by the ’582 patent without payments to the other, absent any contractural limitations to the contrary.   

Dynalloy and GM appear to be collaborating on other automotive uses of active materials as well.  Both companies are co-owners of U.S. Pat. No. 7,766,423, issued on August 3, 2010 for an “Active Material Head Restraint Assembly.”  In addition, the two companies are both participating in a government-funded effort to develop a “Lightweight Thermal Energy Recovery” or “LighTER” system that uses shape memory alloys to generate electricity from the waste heat from the engine.