The suit, filed in US District Court in California in mid-April, argues that Wilkins was legally required to assign to GE all of his rights to the so-called ‘985 patent. The patent is at the core of the intellectual-property dispute between GE and rival Mitsubishi Heavy Industries.
GE is seeking a preliminary injunction, among other things. Its complaint states: "Wilkins has or shortly will take steps to grant to one or more third parties purported license rights involving the technology and intellectual property that in reality is owned by GE."
GE's suit alleges that Wilkins, a California-based engineering consultant, had signed an agreement to assign his inventorship rights to his employers. At the time this was Enron Wind. In 2002, GE bought the wind assets of the defunct Enron.
Also cited in the suit against Wilkins is GE's ‘586 patent, for continuous reactive power control and on which Wilkins is a named co-inventor. GE alleges that he should have assigned his rights to ‘586 to GE but refused to do so. Wilkins' attorney could not be reached for comment.
In August 2009, Judge Carl Charneski of the US International Trade Commission (ITC) had identified Wilkins as an un-named co-inventor of ‘claim 15' of GE's widely-used ‘985 patent, which GE disputes. Charneski also wrote: "In fact, it appears that as a former Enron Wind employee who was kept on at GE without a new contract, [Wilkins] did not have an obligation to make an assignment [of his rights to ‘985 to GE]."
GE is also appealing the ITC's final ruling, issued in January and which in part said that GE was not using the ‘985 and two other patents - and therefore MHI should not be prevented from importing to the US its flagship 2.4 MW turbine. In the suit against Wilkins, GE says that the engineer's claims to ownership has created a "cloud" over GE's intellectual property rights.
