Patent wars - ITC rules GE is not 'sole inventor' of disputed LVRT

That has come to light in the public version of the ITC’s final opinion in the patent war between the two giant rivals. The opinion generally favoured Mitsubishi Heavy Industries (MHI) and allows it to continue importing its flagship 2.4 MW wind turbine to the United States.

The ITC also said that GE has not shown that Wilkins was obliged to assign his patents rights to GE. At one point Wilkins worked for GE, but he left before the patent application was submitted. The commission added: "As an inventor, Wilkins does have an equitable interest that can be perfected to legal title upon application to the [US Patent Office] or through a correction by a district court." 

The confirmation is good news both for Wilkins and MHI.  "This generally complicates GE’s efforts to enforce the patent," said patent lawyer Roger Taylor, who is acting for MHI.  The ITC did not, however, find that GE engaged in ‘inequitable conduct’ in leaving Wilkins’ name off the patent, which could have made the patent unenforceable. Nor did it find that GE lacked the authority to assert the patent at the ITC. That’s because GE is the sole owner of the patent, even if not all inventors are named, said the commissioners.

On March 3, GE formally filed an appeal against the ITC’s decision. This next step, in the US Court of Appeals in Washington DC, could take another 12-to-18 months to be resolved. GE is expected to contest the ITC’s finding that MHI is not violating its variable speed—the ‘039 patent. The same applies to a second LVRT --  the ‘221—and that neither GE nor its licensees are using either patent in the US.

The ITC did not rule on whether MHI is infringing GE’s ‘985 patent although it did find that GE is not using it. This means GE may have more difficulty persuading an appeals court to consider whether MHI is infringing the ‘985. But, since the ITC’s ‘initial determination’—or preliminary opinion—was that MHI was indeed infringing the ‘985, it’s arguable that this portion of the final opinion will favour GE.

The lack of an opinion on whether MHI is infringing the ‘985 could leave an opening for GE in the parallel District Court case, in which it is suing MHI over the same three patents in the court in Corpus Christi, Texas.  ITC decisions are not binding on District Courts, but can be considered persuasive,  says Larry Kass, a patent lawyer who is following the case. That case has been shelved pending the outcome of the ITC case.

Another complication to the Corpus Christi case could involve the finding on Wilkins’ inventorship. This is because in District Court, all owners of a patent have to be party to litigation – and again the ITC’s finding could be considered persuasive.

Less complicated so far is GE’s second suit filed in February in District Court in Dallas and accusing MHI of infringing two different patents. Tom Aiyama, spokesman for MHI in New York said, "We are discussing it with our attorneys. We have not decided how to respond yet." GE licences its wind patents to more than a dozen companies.