Gen. Elec. Co. v. Wilkins

Decision Date08 May 2014
Docket NumberNo. 2013–1170.,2013–1170.
Citation750 F.3d 1324
PartiesGENERAL ELECTRIC COMPANY and Ge Wind Energy, LLC, Plaintiffs/Counterclaim Defendants–Appellees, v. Thomas WILKINS, Defendant/Counterclaimant–Appellant, and Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems Americas, Inc., Counterclaimants.
CourtU.S. Court of Appeals — Federal Circuit

OPINION TEXT STARTS HERE

William F. Lee, Wilmer Cutler Pickering Hale and Dorr LLP, of Boston, MA, argued for plaintiffs/counterclaim defendants-appellees. With him on the brief were Richard W. O'Neill, Elizabeth M. Reilly, Louis W. Tompros, and Andrew J. Danford. Of counsel was Alexandra Cotter Boudreau.

Donald R. Dunner, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, of Washington, DC, argued for defendant/counterclaimant-appellant. With him on the brief were Thomas H. Jenkins, Thomas W. Winland, Jeffrey C. Totten, and TYler M. Akagi. Of counsel on the brief was Roger D. Taylor, of Atlanta, GA.

Before LOURIE, TARANTO, and CHEN, Circuit Judges.

LOURIE, Circuit Judge.

Thomas A. Wilkins (Wilkins) appeals from the decision of the United States District Court for the Eastern District of California entering declaratory judgment in favor of General Electric Company and GE Wind Energy, LLC (collectively GE) that Wilkins is not a coinventor of GE's U.S. Patent 6,921,985 (the “'985 patent”) pursuant to 35 U.S.C. § 256. See Gen. Electric Co. v. Wilkins, No. 10–0674, 2012 WL 5989349 (E.D.Cal. Nov. 29, 2012) (unpublished). Because Wilkins failed to prove by clear and convincing evidence that he was entitled to co-inventorship of the '985 patent, we affirm.

Background

Wind turbines convert wind into electrical energy that is supplied to the power grid. Random events such as lightning strikes and animal contacts can cause wires of the power grid to short, resulting in a reduction in the amount of voltage on the power grid. Such “low voltage events” can damage nearby wind turbines, either by causing the blades of a turbine to rotate out of control or by causing electric current to back up into the generator rotor of a turbine. Conventionally, wind turbines protected against those harms by disconnecting from the power grid during a low voltage event. However, as wind began providing a greater percentage of the overall grid power, utilities began to require that wind turbines remain connected to the grid and continue to operate during a low voltage event. The ability of wind turbines to meet that requirement is known as “low voltage ride through” (“LVRT”). '985 patent col. 1 ll. 30–34.

GE's '985 patent names five co-inventors who were each members of a team of GE engineers based in Salzbergen, Germany that was tasked with meeting the standard of a German utility company, which required wind turbines to ride through voltage drops down to 15% of nominal voltage. Gen. Electric, 2012 WL 5989349, at *4.

The '985 patent is directed to controlling key components of a wind turbine that would allow it to remain connected to the power grid and to safely ride through a low voltage event. '985 patent col. 2 ll. 24–34. The LVRT solution described in the '985 patent involves: (i) a blade pitch controller that varies the angles of the wind turbine blades to maintain safe rotation speeds, id. col. 5 ll. 35–47, col. 6 ll. 32–35; (ii) a converter controller that “guard[s] against excessive currents in the inverters” by selectively activating and deactivating a circuit to shunt excess current away from the turbine's sensitive components, id. col. 4 ll. 32–39, col. 4 l. 65–col. 5 l. 11, col. 5 l. 66–col. 6 l. 4, col. 6 ll. 40–49; and (iii) a turbine controller that provides overall control of the turbine and shuts down nonessential components during a low voltage event, id. col. 4 ll. 38–43, col. 5 ll. 55–65, col. 6 ll. 36–39.

The independent claims of the '985 patent reflect those specific controller functions. Claims 1 and 15 are representative and read as follows:

1. A wind turbine generator comprising: a blade pitch control system to vary a pitch of one or more blades; a turbine controller coupled with the blade pitch control system; a first power source coupled with the turbine controller and with the blade pitch control system to provide power during a first mode of operation; and an uninterruptible power supply coupled to the turbine controller and with the blade pitch control system to provide power during a low voltage event; wherein the turbine controller causes the blade pitch control system to vary the pitch of the one or more blades in response to the transition in response to detection of a transition from the first mode of operation.

15. A wind turbine generator comprising: a generator; a power converter coupled with the generator, the power converter having an inverter coupled to receive power from the generator, a converter controller coupled with the inverter to monitor a current flow in the inverter wherein the converter controller is coupled to receive power from an uninterruptible power supply during a low voltage event, and a circuit coupled with the input of the inverter and with the converter controller to shunt current from the inverter and generator rotor in response to a control signal from the converter controller.

Id. col. 6 l. 65–col. 7 l. 13, col. 7 l. 58–col. 8 l. 3 (emphases added). Each claim requires an uninterruptible power supply (“UPS”), which powers the various controllers so that they can perform their functions during a low voltage event. Id. col. 4 ll. 32–43, col. 5 ll. 41–44. Wilkins is not named as a co-inventor of the '985 patent.

Wilkins began working for GE's predecessor company Enron Wind Corporation, doing business as Zond Wind Energy Systems (“Enron”), in 1998. In the course of that employment, Wilkins was involved in adapting wind turbines to meet certain LVRT requirements at an Enron-owned wind farm in Minnesota known as Lake Benton II. Gen. Electric, 2012 WL 5989349, at *3. After modification, the Lake Benton II wind turbines were capable of riding through voltage drops down to 70% of nominal voltage. Although those turbines incorporated a small capacitor that briefly powered one sensor during a grid outage, that capacitor did not power the converter controller during a low voltage event, nor did modification of the Lake Benton II wind turbines contemplate blade pitch control or a circuit that shunted excess current away from the generator rotor and inverter in order to achieve LVRT. Id. at *3–4. After GE acquired certain assets from Enron, Wilkins worked as an engineer at a GE wind turbine facility in Tehachapi, California.

It is undisputed that the German team had developed detailed specifications and concept documents of its LVRT solution by July 2002 and was planning a presentation to review the technical details, including the use of controllers powered by a UPS, which were available for download through an internal GE website. J.A. 4014–15.

Correspondence between Wilkins and two of the named inventors in spring and summer of 2002 indicates that the German team was consulting Wilkins for confirmation that their invention, which was then implemented on German wind turbines, would work with the different “60 Hz” grid requirements and turbine components used in the United States. Gen. Electric, 2012 WL 5989349, at *5; J.A.2031, 3171. In particular, the correspondence revealed that the work done at Lake Benton II was not interchangeable with the specifications and requirements of the German LVRT design, and no mention was made of a UPS coupled to a converter for the purpose of LVRT. Id. Wilkins traveled to Germany in August 2002. Although Wilkins admitted that no documents exist for that trip, he alleged that he shared his ideas from Lake Benton II and conveyed specific elements of the '985 patent to the German team at that time. Gen. Electric, 2012 WL 5989349, at *5–6; J.A. 577.

In October 2002, Wilkins and a team of GE engineers in California were tasked with developing an LVRT solution for the utility company Florida Power and Light. In the course of that work, Wilkins prepared a document entitled “Design and Cost Analysis,” in which he summarized several ideas, along with a proposal to use a UPS. J.A. 2310–21. The figures depicted in that Design and Cost Analysis “reflect ... [w]here to place the UPS in the circuit” and show that the UPS was proposed to insulate the wind turbine from the power grid during a low voltage event by placing the UPS between the power grid and the turbine. Id. In that arrangement, the turbine controller and converter controller would be situated between the grid and the UPS, and therefore could only receive power from the grid during a low voltage event and not from the UPS. Id. Wilkins admitted that the Design and Cost Analysis does not show the UPS powering the wind turbine's blade pitch controller, and that, although the document does discuss a shunting circuit, it is not the selectively activating and deactivating circuit of the '985 patent. Id.; 598–99. Wilkins left GE later in 2002.

The '985 patent is one of several asserted by GE against Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems Americas, Inc. (collectively Mitsubishi) in at least two lawsuits, including a patent infringement case in the United States District Court for the Southern District of Texas and an investigation before the United States International Trade Commission (“ITC”). The '985 patent is also one of the patents at issue in an antitrust suit that Mitsubishi brought against GE in the United States District Court for the Western District of Arkansas.

In the ITC proceeding, Mitsubishi challenged the validity of the '985 patent and hired Wilkins to search for relevant prior art. Wilkins worked approximately 1,000 hours in an effort to invalidate the '985 patent, for which he received approximately $200,000. Gen. Electric, 2012 WL 5989349, at *9; J.A. 3975. Mitsubishi also argued that the '985 patent was unenforceable based on a...

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