Court Orders Former GE Employee to Cease Wind Patent Licensing Activity

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In a previous post, I wrote about a lawsuit between GE and Thomas Wilkins, a former GE employee, over the rights to certain wind turbine technology.

In that suit, GE has accused Wilkins, an electrical engineer who had worked for Enron Wind and then GE after it acquired Enron, of breaching his employment agreements with both companies by his actions with respect to U.S. Patent Nos. 6,924,565 (’565 Patent) and 6,921,985 (’985 Patent).

The ’985 Patent relates to a blade pitch control system, and the ’565 Patent relates to power control systems for wind turbines.

GE alleges that Wilkins refused to assist in the prosecution of the application that matured into the ’565 Patent, recently asserted an ownership interest in and offered to license the ’565 Patent on a publicly-available web site, and recently asserted an ownership interest in and offered to license the ’985 Patent to Mitsubishi (ge-wilkins_am_complaint.pdf).

In an Opinion and Order decided earlier this month (GE-Wilkins_Opinion), Judge Oliver Wanger held that the technology of the ’565 and ’985 Patents presumptively belongs to GE because Wilkins conceived the inventions while working as an employee of GE for the purpose of developing the technology and “being paid to invent.”

Although Wilkins did some development work as an employee of Enron, the court found no evidence that the scope of his job duties changed when he transferred from Enron to GE.

Therefore, the court concluded that Wilkins likely does not own the patents-at-issue:

Based on the current record, it does not appear that Defendant has rights in the subject technology sufficient to permit Defendant to license the technology to Plaintiff’s competitors.

Judge Wanger granted GE’s motion for a preliminary injunction and ordered Wilkins to stop licensing or offering to license the ’565 and ’985 Patents until the lawsuit is resolved or the court decides otherwise:

For the reasons stated, Defendant Thomas Wilkins and those acting in concert with him, and those who have actual notice of this order, are enjoined and restricted from licensing or offering to license any interest in the technology described in the ’565 and ’985 patents, or from making any representation that Wilkins is presently legally entitled to license such technology, pending the entry of a final judgment in this action or further order of the court.

Mitsubishi has intervened in the case. The ’985 Patent is one of several asserted by GE against Mitsubishi in at least two lawsuits, including a patent infringement case in Texas and an investigation in the U.S. International Trade Commission (ITC), for which GE is appealing the ITC’s ruling. Among other things, Wilkins’ inventive contributions to the ’985 Patent were at issue in the ITC case.

The ’985 Patent is also one of the patents-at-issue in Mitsubishi’s antitrust suit against GE, in which it has accused its rival of engaging in an anticompetitive scheme to monopolize the U.S. market for variable speed wind turbines. The antitrust suit has been stayed pending resolution of the patent infringement suits.

Eric Lane is a patent attorney at Luce, Forward, Hamilton & Scripps in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at elane@luce.com.

About Author

Walter’s contributions to CleanTechies over the past 4 years have been instrumental in growing the publications social media channels via his ongoing editorial and data driven strategies. He is the founder and managing director of Sunflower Tax, a renewable energy tax and finance consultancy based in San Diego, California. Active in the San Diego clean technology community, participating in events sponsored by CleanTech San Diego, EcoTopics, and Cleantech Open San Diego, Walter has also been a presenter at numerous California Center for Sustainability (CCSE) programs. He currently serves as an adjunct professor at the University of San Diego School of Law where he teaches a course on energy taxation and policy.