CAFC rules on GE's wind turbine case at ITC
The conclusion stated:
The ruling that Mitsubishi’s turbines do not violate section 337 because they do not infringe the ’221 patent is affirmed. The ruling that the domestic industry requirement is not met as to the ’221 patent is vacated as moot. The ruling that there is no domestic industry corresponding to the ’985 patent is reversed, and the case is remanded for further proceedings with respect to the ’985 patent.
Thus GE lost as to the claims of US 7,321,221, but got a reprieve as to US 6,921,985.
**Claim 5 of US '221 states:
claim 5 (emphases added) [sic: no emphasis in published decision]:
5. A wind turbine, comprising: a rotor with at least one rotor blade, the rotor
being rotatably arranged with regard to a substantially horizontal rotor axis;
an induction generator whose rotor windings are coupled to the rotor and whose stator coils can be coupled to a voltage grid;
a feed-in unit for feeding currents into the rotor windings;
a control unit for controlling the frequency of the fed-in currents depending on the rotor rotation frequency, and
an emergency unit which can be operated to electrically decouple the feed-in unit from the rotor windings in case of variations of the grid voltage amplitude, wherein the emergency unit comprises a release arrangement for releasing the rotor current feed-in after decoupling, when the currents gener- ated in the rotor windings by variation of the grid voltage amplitude triggering the decoupling are de- clined to a predetermined value.
General Electric, citing Honeywell International, Inc. v. ITT Indus- tries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006), argues that because the specification refers to a predetermined time constant “within the framework of the method according to the invention,” the passage of a fixed period of time is included in the scope of the claims.
The CAFC did not agree with GE:
No embodiment in the patent, no drawing, no circuitry, shows recoupling solely after a predetermined period of time. Although the specification shows that General Elec- tric knew that various electrical disturbances for which this protective circuitry is intended occur within a known dura- tion, the ’221 invention as claimed is explicitly limited to recoupling when the actual end of the specific disturbance has been determined by measurement of when the current has declined to a predetermined value. Although General Electric recognized and described the usual duration of such electrical disturbances, a possibly broader disclosure accom- panied by an explicit narrow claim shows the inventor’s selection of the narrow claim scope. See 35 U.S.C. §112 ¶2 (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”).
AND
The Commission held that the ’221 claims are directed to a predetermined value of current or a proxy for current. The inclusion of a proxy for current comports with Linear Technology Corp. v. International Trade Commission, 566 F.3d 1049, 1060 (Fed. Cir. 2009), which held that “monitor- ing the current to the load” could be indirectly measured by voltage, for “once voltage is known, one skilled in the art would recognize that Ohm’s Law4 easily allows current to be calculated, therefore monitoring current indirectly by moni- toring voltage.” The Commission’s construction of “prede- termined value” as a value of current or a proxy for current “stays true to the claim language and most naturally aligns with the patent’s description of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting Renishaw PLC v. Marposs Societá per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). This claim construction is affirmed.
Footnote 4 cites a case to support Ohm's Law:
“Ohm’s Law is a principle of electrical circuits and is represented by the equation I (current) = V (voltage) / R (resistance). Thus, it states that the current through a conductor between two points is directly proportional to the voltage across the two points, and inversely proportional to the resistance between them.” Linear Tech., 566 F.3d at 1059 n.4.
The doctrine of equivalents arose:
General Electric argued that even if there is not literal infringement, the doctrine of equivalents applies because the system in the ’221 patent and the Mitsubishi system perform substantially the same function in substantially the same way to achieve the same result, whether recoupling is measured by current drop or by the passage of time. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008) (summarizing the criteria of infringement based on equivalency).
**As to matters with the '985 patent:
However, the function of the shunt circuit does not depend on whether the shunt circuit is entirely outside of the inverter, and the ’985 specification does not require separation of the inverter and the shunt circuit in order for that circuit to be coupled with the input of the inverter and with the converter con- troller; rather, the term “coupled with” indicates a connec- tion. See Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 992 (Fed. Cir. 1999) (“‘[C]oupled’ generically describes a connection, and does not require a mechanical or physical coupling.”).
A similar argument was rejected in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), where some of the claims recited a receiver “connected to” or “coupled to” a processor or that the receiver “transfers” information to the processor. The accused infringer in NTP had argued that “connected to,” “coupled to,” and “transfer from” each requires the receiver and the processor to be separate, but the court concluded that “the two components could be connected, joined, or linked together by wires or other electrical conductors and still be located in the same housing or even on the same circuit board.” 418 F.3d at 1310-11. The court also held that the function that informa- tion is transferred between two entities does not require physical separation of the entities. Id. at 1310. NTP does not support the Commission’s ruling that the word “from” requires physical separation of the shunt circuit and the inverter.
We conclude that claim 15 requires that the circuit is coupled with the input of the inverter and the converter controller, whereby the current is shunted from the inverter and the rotor; this requirement does not limit the placement of the shunting circuitry to a location entirely external to the inverter. As in Linear Technology, “there is nothing in the claim language or specification that supports narrowly construing the terms to require a specific structural re- quirement or entirely distinct [circuits]. Rather, the [cir- cuits] must only perform their stated functions.” 566 F.3d at 1055.6
Of contradictory positions, footnote 6:
Mitsubishi submitted a letter in accordance with Fed. R. App. P. 28(j), arguing that General Electric stated a position before the PTO during the ongoing reexamination of the ’985 patent that contradicts its arguments here. General Electric responds that its argument distinguishing a certain reference does not conflict with its position here. On the information before us, the reexamination arguments do not affect our conclusion.
Of the concept of dominating patent:
Mitsubishi states that if General Electric’s turbines practice the subject matter claimed in a separate patent, they cannot practice the invention of the ’985 patent. That is not correct, for a separately patented invention may indeed be within the scope of the claims of a dominating patent. See Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1582 (Fed. Cir. 1996) (“The fact of separate patentability presents no legal or evidentiary presumption of noninfringement . . . .”); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1580 (Fed. Cir. 1984) (an improvement in a step of a patented method, even if separately patentable, may not avoid infringement). The scope of the ’985 patent is determined on its own terms, independent of whether other aspects or modifications of the technology are separately patented.
The bottom line on US '985 favored GE:
The domestic industry requirement is not negated if the technology as employed in the domestic industry has been modified from its form when the patent was obtained.
We conclude that claim 15, correctly construed, covers the domestic industry turbines. The Commission erred in determining that General Electric does not meet the domestic industry requirement with respect to the ’985 patent. That ruling is reversed. See Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1359 (Fed. Cir. 2007) (reversing finding of no domestic industry, on corrected claim construction).
There was another issue, more between the ITC and the CAFC:
Thus the Commission holds that when the full Commission does not review an issue that it noticed for review, that issue is removed from access to judicial review. This inter- pretation conflicts with the statutory right of judicial review of Commission determinations, provided in 19 U.S.C. §1337(c). Such interpretation also conflicts with the princi- ples of 19 C.F.R. §210.42(h) and §210.45(c), for no statutory or regulatory provision contemplates excluding a fully litigated ITC decision from access to judicial review.
The Commission has stated that the 2008 amendments are simply “procedural rules” promulgated “in order to increase the efficiency of its section 337 investigations.” Rules of General Application and Adjudication and En- forcement, 73 Fed. Reg. 38,316, 38,318 (July 7, 2008). The public comments on the 2008 amendments were directed to the proposed extensions of the time limits, and did not perceive the possibility of removal of fully litigated issues from finality. This consequence is not stated in the regula- tion, and is not explored in the comment record, where most commentators stated their concern for the lengthening of the target dates for Commission proceedings. For example:
[O]ne of the great advantages of Section 337 pro- ceedings is their speedy adjudication. The role that the Commission and Section 337 have achieved as one of the key forums for protection of valuable U.S. intellectual property rights rests on the speed and high quality of its adjudicatory process.
ITC Trial Lawyers Association, Comment to Notice of Pro- posed Rulemaking, ITC Doc. No. 296282, at 6 (Mar. 31, 2008). Speedy adjudication requires finality.
The amendment to §210.45(c) does not state that any is- sue on which the Commission takes no position is removed from access to the judicial review of Commission proceed- ings as provided by §210.42(h). Such a purpose would surely have occasioned comment; for example, the Intellec- tual Property Owners Association commented on the au- thorized extension of target dates, stating that:
IPO members place much value in the Commission’s prompt and effective resolution of Section 337 inves- tigations “at the earliest practicable time.” (quoting 19 U.S.C. §1337(b)).
Comment to Notice of Proposed Rulemaking, ITC Doc. No. 296810, at 2 (Mar. 31, 2008). “Prompt and effective resolu- tion” is not served by removing finality from the decision of issues on which Commission proceedings are over, thereby barring judicial appeal of those decisions.
The Commission states that this court held in Beloit Corp. supra, that any “noticed” issue of the Initial Determi- nation on which the Commission took no position cannot be appealed to the court. That is inaccurate, for Beloit dealt with the situation in which the prevailing party in the Commission sought judicial review of other issues that the Commission did not reach. This court held that the prevail- ing party had no right of appeal, and that issues which had not been reviewed by the Commission were not appealable by the party that prevailed in the Commission.
Of course a prevailing party cannot appeal, for there is no controversy. Am. Tel. & Tel. Co. v. Int’l Trade Comm’n, 626 F.2d 841, 842 (CCPA 1980) (“Since the ITC determined that there was no §1337 violation by Bell, Bell is without standing to appeal.”). The court in Beloit did not authorize the Commission to deprive the losing party of its right of judicial appeal. 19 C.F.R. §210.42(h)(2) provides that issues decided by Initial Determination and not reviewed by the full Commission become final, and are appealable to the Federal Circuit. This right cannot be negated by taking no position on the issue. The result propounded by the Com- mission is anomalous: if the issue decided by initial deter- mination is “noticed” and then reviewed by the Commission, the decision of that issue is routinely subject to appeal by the losing party; if the issue is not “noticed” by the Commis- sion, the decision is again routinely subject to appeal by the losing party; but if the issue is “noticed” by the Commission and then not reviewed, the decision is not subject to appeal by the losing party. The consequences of this practice are illustrated in this case, for all contested issues concerning the ’985 patent were investigated by the Commission, tried to the ALJ, decided by Initial Determination, yet nearly all were held unavailable for judicial review. Thus we are obliged to remand to the Commission for undefined further proceedings, for which one may be confident only of further time and cost in the Commission and upon re-appeal to this court. The legislative purpose of expedited ITC resolution of unfair competition issues requires attention, in accord with statute and regulation, that issues decided by initial determination and not substantively reviewed by the full Commission are deemed determinations of the Commission in accordance with 19 C.F.R. §210.42(h)(2), and entitled to appeal in accordance with 19 U.S.C. §1337(c).
The ruling that Mitsubishi’s turbines do not violate section 337 because they do not infringe the ’221 patent is affirmed. The ruling that the domestic industry requirement is not met as to the ’221 patent is vacated as moot. The ruling that there is no domestic industry corresponding to the ’985 patent is reversed, and the case is remanded for further proceedings with respect to the ’985 patent.
Thus GE lost as to the claims of US 7,321,221, but got a reprieve as to US 6,921,985.
**Claim 5 of US '221 states:
claim 5 (emphases added) [sic: no emphasis in published decision]:
5. A wind turbine, comprising: a rotor with at least one rotor blade, the rotor
being rotatably arranged with regard to a substantially horizontal rotor axis;
an induction generator whose rotor windings are coupled to the rotor and whose stator coils can be coupled to a voltage grid;
a feed-in unit for feeding currents into the rotor windings;
a control unit for controlling the frequency of the fed-in currents depending on the rotor rotation frequency, and
an emergency unit which can be operated to electrically decouple the feed-in unit from the rotor windings in case of variations of the grid voltage amplitude, wherein the emergency unit comprises a release arrangement for releasing the rotor current feed-in after decoupling, when the currents gener- ated in the rotor windings by variation of the grid voltage amplitude triggering the decoupling are de- clined to a predetermined value.
General Electric, citing Honeywell International, Inc. v. ITT Indus- tries, Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006), argues that because the specification refers to a predetermined time constant “within the framework of the method according to the invention,” the passage of a fixed period of time is included in the scope of the claims.
The CAFC did not agree with GE:
No embodiment in the patent, no drawing, no circuitry, shows recoupling solely after a predetermined period of time. Although the specification shows that General Elec- tric knew that various electrical disturbances for which this protective circuitry is intended occur within a known dura- tion, the ’221 invention as claimed is explicitly limited to recoupling when the actual end of the specific disturbance has been determined by measurement of when the current has declined to a predetermined value. Although General Electric recognized and described the usual duration of such electrical disturbances, a possibly broader disclosure accom- panied by an explicit narrow claim shows the inventor’s selection of the narrow claim scope. See 35 U.S.C. §112 ¶2 (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.”).
AND
The Commission held that the ’221 claims are directed to a predetermined value of current or a proxy for current. The inclusion of a proxy for current comports with Linear Technology Corp. v. International Trade Commission, 566 F.3d 1049, 1060 (Fed. Cir. 2009), which held that “monitor- ing the current to the load” could be indirectly measured by voltage, for “once voltage is known, one skilled in the art would recognize that Ohm’s Law4 easily allows current to be calculated, therefore monitoring current indirectly by moni- toring voltage.” The Commission’s construction of “prede- termined value” as a value of current or a proxy for current “stays true to the claim language and most naturally aligns with the patent’s description of the invention.” Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting Renishaw PLC v. Marposs Societá per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)). This claim construction is affirmed.
Footnote 4 cites a case to support Ohm's Law:
“Ohm’s Law is a principle of electrical circuits and is represented by the equation I (current) = V (voltage) / R (resistance). Thus, it states that the current through a conductor between two points is directly proportional to the voltage across the two points, and inversely proportional to the resistance between them.” Linear Tech., 566 F.3d at 1059 n.4.
The doctrine of equivalents arose:
General Electric argued that even if there is not literal infringement, the doctrine of equivalents applies because the system in the ’221 patent and the Mitsubishi system perform substantially the same function in substantially the same way to achieve the same result, whether recoupling is measured by current drop or by the passage of time. See Voda v. Cordis Corp., 536 F.3d 1311, 1326 (Fed. Cir. 2008) (summarizing the criteria of infringement based on equivalency).
**As to matters with the '985 patent:
However, the function of the shunt circuit does not depend on whether the shunt circuit is entirely outside of the inverter, and the ’985 specification does not require separation of the inverter and the shunt circuit in order for that circuit to be coupled with the input of the inverter and with the converter con- troller; rather, the term “coupled with” indicates a connec- tion. See Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 992 (Fed. Cir. 1999) (“‘[C]oupled’ generically describes a connection, and does not require a mechanical or physical coupling.”).
A similar argument was rejected in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), where some of the claims recited a receiver “connected to” or “coupled to” a processor or that the receiver “transfers” information to the processor. The accused infringer in NTP had argued that “connected to,” “coupled to,” and “transfer from” each requires the receiver and the processor to be separate, but the court concluded that “the two components could be connected, joined, or linked together by wires or other electrical conductors and still be located in the same housing or even on the same circuit board.” 418 F.3d at 1310-11. The court also held that the function that informa- tion is transferred between two entities does not require physical separation of the entities. Id. at 1310. NTP does not support the Commission’s ruling that the word “from” requires physical separation of the shunt circuit and the inverter.
We conclude that claim 15 requires that the circuit is coupled with the input of the inverter and the converter controller, whereby the current is shunted from the inverter and the rotor; this requirement does not limit the placement of the shunting circuitry to a location entirely external to the inverter. As in Linear Technology, “there is nothing in the claim language or specification that supports narrowly construing the terms to require a specific structural re- quirement or entirely distinct [circuits]. Rather, the [cir- cuits] must only perform their stated functions.” 566 F.3d at 1055.6
Of contradictory positions, footnote 6:
Mitsubishi submitted a letter in accordance with Fed. R. App. P. 28(j), arguing that General Electric stated a position before the PTO during the ongoing reexamination of the ’985 patent that contradicts its arguments here. General Electric responds that its argument distinguishing a certain reference does not conflict with its position here. On the information before us, the reexamination arguments do not affect our conclusion.
Of the concept of dominating patent:
Mitsubishi states that if General Electric’s turbines practice the subject matter claimed in a separate patent, they cannot practice the invention of the ’985 patent. That is not correct, for a separately patented invention may indeed be within the scope of the claims of a dominating patent. See Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1582 (Fed. Cir. 1996) (“The fact of separate patentability presents no legal or evidentiary presumption of noninfringement . . . .”); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1580 (Fed. Cir. 1984) (an improvement in a step of a patented method, even if separately patentable, may not avoid infringement). The scope of the ’985 patent is determined on its own terms, independent of whether other aspects or modifications of the technology are separately patented.
The bottom line on US '985 favored GE:
The domestic industry requirement is not negated if the technology as employed in the domestic industry has been modified from its form when the patent was obtained.
We conclude that claim 15, correctly construed, covers the domestic industry turbines. The Commission erred in determining that General Electric does not meet the domestic industry requirement with respect to the ’985 patent. That ruling is reversed. See Osram GmbH v. Int’l Trade Comm’n, 505 F.3d 1351, 1359 (Fed. Cir. 2007) (reversing finding of no domestic industry, on corrected claim construction).
There was another issue, more between the ITC and the CAFC:
Thus the Commission holds that when the full Commission does not review an issue that it noticed for review, that issue is removed from access to judicial review. This inter- pretation conflicts with the statutory right of judicial review of Commission determinations, provided in 19 U.S.C. §1337(c). Such interpretation also conflicts with the princi- ples of 19 C.F.R. §210.42(h) and §210.45(c), for no statutory or regulatory provision contemplates excluding a fully litigated ITC decision from access to judicial review.
The Commission has stated that the 2008 amendments are simply “procedural rules” promulgated “in order to increase the efficiency of its section 337 investigations.” Rules of General Application and Adjudication and En- forcement, 73 Fed. Reg. 38,316, 38,318 (July 7, 2008). The public comments on the 2008 amendments were directed to the proposed extensions of the time limits, and did not perceive the possibility of removal of fully litigated issues from finality. This consequence is not stated in the regula- tion, and is not explored in the comment record, where most commentators stated their concern for the lengthening of the target dates for Commission proceedings. For example:
[O]ne of the great advantages of Section 337 pro- ceedings is their speedy adjudication. The role that the Commission and Section 337 have achieved as one of the key forums for protection of valuable U.S. intellectual property rights rests on the speed and high quality of its adjudicatory process.
ITC Trial Lawyers Association, Comment to Notice of Pro- posed Rulemaking, ITC Doc. No. 296282, at 6 (Mar. 31, 2008). Speedy adjudication requires finality.
The amendment to §210.45(c) does not state that any is- sue on which the Commission takes no position is removed from access to the judicial review of Commission proceed- ings as provided by §210.42(h). Such a purpose would surely have occasioned comment; for example, the Intellec- tual Property Owners Association commented on the au- thorized extension of target dates, stating that:
IPO members place much value in the Commission’s prompt and effective resolution of Section 337 inves- tigations “at the earliest practicable time.” (quoting 19 U.S.C. §1337(b)).
Comment to Notice of Proposed Rulemaking, ITC Doc. No. 296810, at 2 (Mar. 31, 2008). “Prompt and effective resolu- tion” is not served by removing finality from the decision of issues on which Commission proceedings are over, thereby barring judicial appeal of those decisions.
The Commission states that this court held in Beloit Corp. supra, that any “noticed” issue of the Initial Determi- nation on which the Commission took no position cannot be appealed to the court. That is inaccurate, for Beloit dealt with the situation in which the prevailing party in the Commission sought judicial review of other issues that the Commission did not reach. This court held that the prevail- ing party had no right of appeal, and that issues which had not been reviewed by the Commission were not appealable by the party that prevailed in the Commission.
Of course a prevailing party cannot appeal, for there is no controversy. Am. Tel. & Tel. Co. v. Int’l Trade Comm’n, 626 F.2d 841, 842 (CCPA 1980) (“Since the ITC determined that there was no §1337 violation by Bell, Bell is without standing to appeal.”). The court in Beloit did not authorize the Commission to deprive the losing party of its right of judicial appeal. 19 C.F.R. §210.42(h)(2) provides that issues decided by Initial Determination and not reviewed by the full Commission become final, and are appealable to the Federal Circuit. This right cannot be negated by taking no position on the issue. The result propounded by the Com- mission is anomalous: if the issue decided by initial deter- mination is “noticed” and then reviewed by the Commission, the decision of that issue is routinely subject to appeal by the losing party; if the issue is not “noticed” by the Commis- sion, the decision is again routinely subject to appeal by the losing party; but if the issue is “noticed” by the Commission and then not reviewed, the decision is not subject to appeal by the losing party. The consequences of this practice are illustrated in this case, for all contested issues concerning the ’985 patent were investigated by the Commission, tried to the ALJ, decided by Initial Determination, yet nearly all were held unavailable for judicial review. Thus we are obliged to remand to the Commission for undefined further proceedings, for which one may be confident only of further time and cost in the Commission and upon re-appeal to this court. The legislative purpose of expedited ITC resolution of unfair competition issues requires attention, in accord with statute and regulation, that issues decided by initial determination and not substantively reviewed by the full Commission are deemed determinations of the Commission in accordance with 19 C.F.R. §210.42(h)(2), and entitled to appeal in accordance with 19 U.S.C. §1337(c).
posted by Lawrence B. Ebert at 10:38 AM
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