Thursday, May 08, 2014

GE wins wind turbine inventorship case: "without credible testimony from Wilkins, there was nothing to corroborate"

GE prevailed in the Wilkins case concerning inventorship.

At one point, Wilkins worked for GE in the area of wind turbines.
Later in time, however, Wilkins came to work for competitor Mitsubishi:,
in particular to challenge a GE patent, US '985:

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.


Following the ITC proceedings, Wilkins averred that
he retained ownership rights in the ’985 patent
and U.S.
Patent 6,924,565 (the “’565 patent”), which is directed to
continuous reactive power support for wind turbine
generators that GE prosecuted in Wilkins’s name after he
left the company. Wilkins subsequently entered into
another set of agreements with Mitsubishi under which
Mitsubishi paid him $100,000 for an option to license the
’985 patent and an additional $200,000 for “consulting”
work. J.A. 3961–64. In return, Wilkins agreed to “take
all necessary and reasonable steps” to support Mitsubishi
in actions against GE regarding the ’985 patent. Id.

Of some interest

The district court initially found that GE was likely to
prevail on its claims and preliminarily enjoined Wilkins
from licensing either of the patents in suit. Gen. Electric
Co. v. Wilkins, No. 10-0674, 2011 WL 1740420 (E.D. Cal.
May 5, 2011) (unpublished). After subsequently refusing
four times to take an unqualified oath to tell the truth at
his deposition, behavior that the court deemed “not acceptable,”
Wilkins filed a declaration calling the district
court “obtuse,” “overly assumptive,” and “ignorant.” Gen.
Electric Co. v. Wilkins, No. 10-0674, 2011 WL 220240
(E.D. Cal. Jan. 21, 2011) (unpublished);

In turn

In reaching that conclusion, the district court determined
that Wilkins had undermined his own credibility.
The court noted that Wilkins had received approximately
$2 million from Mitsubishi by the time of the trial and
had indeed demanded those substantial payments in
order for him to “stay in the game” so that Mitsubishi
could “manage” him. Id. at *9–10. The court thus concluded
that Wilkins was “biased,” “a purchased witness/
party,” and “more concerned about gaining personal
advantage than testifying truthfully.” Id. at *3, *12. The
court found that Wilkins lacked credibility based on his
“purposefully evasive” responses to even basic questions,
noting that Wilkins was “repeatedly impeached during
cross-examination, to the point where the veracity of even
simple answers w[as] called into question.” Id. at *3. The
district court judge described Wilkins as “one of the worst
witnesses I have ever seen.” J.A. 842.

Wilkins had involvement in the technology in question while at GE.

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.

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

As to the underlying law:

Inventorship is a question of law, which we review
without deference. Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456, 1460 (Fed. Cir. 1998). We review the
district court’s underlying findings of fact for clear error.
Id. Because the issuance of a patent creates a presumption
that the named inventors are the true and only
inventors, id., the burden of showing misjoinder or nonjoinder
of inventors is a heavy one and must be proved by
clear and convincing evidence, Hess v. Advanced Cardiovascular
Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997)
(citing Garrett Corp. v. United States, 190 Ct. Cl. 858, 422
F.2d 874, 880 (1970)). Credibility determinations are
entitled to strong deference. See Celsis In Vitro, Inc. v.
CellzDirect, Inc., 664 F.3d 922, 929 (Fed. Cir. 2012);
Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1330
(Fed. Cir. 1998).

Corroboration is needed (recall the Barbed Wire cases):

We agree with both GE and the district court that, in
light of all the record evidence, Wilkins did not prove his
inventorship claim by clear and convincing evidence
because he did not present any credible testimony that
could be corroborated. In order to guard “against courts
being deceived by inventors who may be tempted to
mischaracterize the events of the past through their
testimony,” the law requires corroboration of a putative
inventor’s credible testimony, the sufficiency of which is
measured under a “rule of reason” standard. Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374
(Fed. Cir. 2009). Therefore, as a threshold matter, in
order for the rule of reason requirement to even apply
there must be some evidence that a fact-finder can find
reasonable; the putative inventor must first provide
credible testimony that only then must be corroborated.
See, e.g., Univ. of Colo. Found., Inc. v. Am. Cyanamid Co.,
342 F.3d 1298, 1308–09 (Fed. Cir. 2003) (rejecting inventorship
theory based upon putative inventor’s discredited
testimony). The very purpose of the rule of reason requirement
is to verify the credibility of a putative inventor’s
story. Loral Fairchild Corp. v. Matsushita Elec.
Indus. Co., 266 F.3d 1358, 1364 (Fed. Cir. 2001); Ethicon,
135 F.3d at 1461; Price v. Symsek, 988 F.2d 1187, 1195
(Fed. Cir. 1993) (“An evaluation of all pertinent evidence
must be made so that a sound determination of the credibility
of the inventor’s story may be reached.”).

The Ewen case is cited:

Record evidence confirms that Wilkins collected ideas
from many different collaborating GE sources when
preparing the Design and Cost Analysis. J.A. 2365–66.
Wilkins himself conceded that the idea to use a UPS to
perform LVRT was not novel in 2002. Id. at 591–92.
Accordingly, if all Wilkins allegedly contributed to the
’985 patent was the idea to use a UPS, then he would
have contributed nothing beyond what was already
known in the art. That is not sufficient to name Wilkins
as a co-inventor. Fina Oil & Chem. Co. v. Ewen, 123 F.3d
1466, 1473 (Fed. Cir. 1997) (“[A] person will not be a coinventor
if he or she does no more than explain to the real
inventors concepts that are well known and the current
state of the art.”).


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