New Front Opens in Wind Patent War as Mitsubishi Stages Intervention

What began as a separate action may become formally linked to the largest extant U.S. wind power patent war as Mitsubishi has requested to intervene in a lawsuit brought by GE against a former employee over rights to two wind patents.

Last spring GE sued Thomas Wilkins, an electrical engineer who had worked for Enron Wind and then GE after it acquired Enron, in the Eastern District of California, accusing Wilkins 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). GE filed an amended complaint in October 2010 (ge-wilkins_am_complaint.pdf).

GE alleged 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.

The case has aroused Mitsubishi’s interest because 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, 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 case has been stayed pending resolution of the patent infringement suits.

The ‘985 Patent is directed to a wind turbine that includes a blade pitch control system and a turbine controller coupled with the blade pitch control system. To increase the reliability of the turbine’s power supply, the turbine controller causes the blade pitch control system to vary pitch in response to transitions between different power sources.

In its motion to intervene (mitsubishi_motion.pdf), Mitsubishi argues that it has a right to intervene because this action raises the same technology and ownership issues as the other lawsuits between GE and Mitsubishi, and as the only prospective licensee of the ‘985 Patent, Mitsubishi is the real party-in-interest.

Also pending is Wilkins’ motion to dismiss (wilkins_mot_dismiss.pdf), in which he asserts that GE’s claims are barred by the 4-year California state statute of limitations for actions relating to written contracts. Wilkins contends that all of the claims stem from his alleged breaches of employment agreements, which occurred back in 2004 and 2005.

So an interesting new chapter unfolds in the GE-Mitsubishi wind patent war. The resolution of Mitsubishi’s motion to intervene and Wilkins’ motion to dismiss will determine whether this latest chapter will be a long one or a short one.

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.