United States

United States

Alleged inventor sued in patent saga

US: US company General Electric (GE) has sued Thomas Wilkins, the alleged co-inventor of key GE wind technology, in a further twist in the long-running, high-stakes patent battle over wind turbine technology rights between GE and Japan's Mitsubishi Heavy Industries.

Wilkins claims to have helped invent technology that enables wind turbines to stay connected to the grid during momentary plunges in voltage, known as low-voltage ride-through technology (LVRT).

Wilkins' claim is backed by Mitsubishi, which is speculated to be seeking a licence from Wilkins for the LVRT, also known as the '985 patent. Last August, a judge at the US International Trade Commission (ITC) identified Wilkins as a co-inventor of '985 with the right to license the technology without GE's consent and to collect royalties. The finding of the ITC's judge, Carl Charneski, is not binding on other courts, but could be considered "persuasive", say observers. GE disputes Wilkins' inventorship claim.

Crucial factor in market share

The latest suit, filed in US District Court in California in April by GE and GE Wind, claims Wilkins was legally required to assign all his rights to the '985 patent to GE. The company is seeking a preliminary injunction, a jury trial and an order compelling Wilkins to assign it his rights. "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," alleges GE. The dates of the case will be set at a meeting on August 5.

The '985 patent, which does not expire until January 2023, is at the core of the dispute between GE and Mitsubishi. GE is thought to license a suite of wind rights, including '985, in the US for as much as $25,000 a megawatt; it owns 148 US patents related to wind energy. The dispute is a key factor in the companies' drive to increase US market share. Mitsubishi will soon start US manufacturing of its flagship 2.4MW turbine, the same one that GE alleges is illegally using its patented intellectual property, including LVRT. Crucially, GE is to start shipping its rival 2.5MW turbine in the US this year.

GE, the largest US turbine manufacturer, is now fighting a four-pronged battle to protect its intellectual property. It is appealing the ITC's final finding, in January, that it is not itself using three patents in the US, including '985, and that Mitsubishi is not violating its intellectual property rights.

GE has also sued Mitsubishi and two affiliates over the same three patents, in a parallel case in US District Court in Corpus Christi, Texas. That case is on hold and may be complicated by the fact that, in US District Court, all inventors must be party to a suit, and Wilkins is not a plaintiff. GE also sued Mitsubishi in February in US District Court in Dallas, Texas, accusing it of infringing two additional wind-related patents.

In the Wilkins suit, GE specifically alleges that the California-based engineering consultant had signed agreements to assign inventorship rights to two companies that employed him, Enron Wind and GE. In 2002, GE bought the wind assets of the defunct Enron.

However, from a close reading of the complaint, it appears that GE only has a "belief" that Wilkins signed an agreement with GE regarding intellectual property. Such wording may mean that GE has not found the document in question. In fact, GE asserts in the complaint: "By virtue of its acquisition of Enron's assets, GE stepped into the shoes of Enron with respect to Wilkins' obligations concerning ownership and assignment of intellectual property."

Spokesman Dan Nelson would not comment on whether GE had a copy of the document. Nelson said, however, that Wilkins had an "obligation to assign to GE any intellectual property rights he may have developed in the course of his employment at GE".

Wilkins, during the ITC proceedings, said he never signed a contract with GE. Indeed, Judge Charneski in his initial determination issued in August, 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)."

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 asserts that he should have assigned his rights to '586 to GE, but he refused to do so. GE appears to be trying to show a pattern of Wilkins inventing for GE but refusing to assign his rights, regardless of whether he is a named co-inventor.

The timing of Wilkins' employment or consultancy with Enron Wind and GE, and its relation to the timing of the invention of the patented technology, will be crucial in the dispute. In his opinion, Judge Charneski had said that Wilkins "left the employ of GE in 2002, shortly before the application for the '985 patent was filed".

Larry Kass, a partner at Milbank, Tweedy, Hadley & McCloy LLP in New York, who is following the case, says it illustrates the need for clear agreements between companies and those that work for them. Of GE's complicated situation in the case of Wilkins and '985, Kass says: "GE has alleged it did not even believe Wilkins was an inventor for this patent and now he may end up being a significant obstacle to asserting the patent against Mitsubishi in a massive litigation over market share of the multi-billion-dollar wind industry."

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