Docket No. 2013-1170
LOURIE, TARANTO, CHEN
May 8, 2014
Brief Summary: Mr. Wilkin’s testimony was found to lack credibility and corroboration required under the “rule of reason” by which inventorship claims are assessed.
Summary: Thomas Wilkins appealed from DC finding that he could not prove by clear and convincing evidence that he was entitled to co-inventorship of US 6,921,985 related to wind turbines. Conventional wind turbines automatically disconnect from the power grid during “low voltage” events (lightning, animal contacts). GE was contracted by a German utility company to design wind turbines that could “ride through voltage drops down to 15% of nominal voltage.” GE’s 985 patent names five GE engineers based in Germany as co-inventors. The ‘985 patent is directed to three key components: a blade pitch controller that varies the angle of the blades to maintain safe rotation speeds, a converter controller that shunts excess current away from the turbine, a turbine controller that shuts down nonessential components during a low voltage event. Each of the claims requires an uninterruptable power supply (UPS) that powers the controllers. Mr. Wilkins began working on adapting wind turbines to meet certain low voltage requirements at a wind farm in Minnesota with GE’s predecessor company Enron Wind Corporation in 1998. The opinion explains that Wilkins and two of the named inventors corresponded in the spring and summer of 2002 “for confirmation that their invention, which was then implemented on German wind turbines, would work with different ’60 Hz’ grid requirements and turbine components used the in the United States.” The correspondence, though, “revealed that the work done at [the MN site] was not interchangeable with the specifications and requirements of the German  design, and no mention was made of a UPS coupled to a converter”. At some point, Wilkins provided a design for using a UPS (which he later admitted was not novel in 2002) but not for powering the blade pitch controller as claimed in the ‘985 patent (and was shown by the prosecution history to be key to overcoming prior art rejections). Mr. Wilkins left GE in 2002 and was then hired by Mitsubishi (which GE alleged infringed the ‘985 patent) to search for invalidating prior art. Mitsubishi’s allegation that the failure to name Mr. Wilkins as a co-inventor was inequitable conduct was rejected by the ITC and affirmed by the FC in 2012. Mitsubishi also paid Wilkins $1.6 million for ‘985 licensing rights and $200,000 for additional “consulting”. The DC found Wilkins to lack credibility and “[s]imply put, there [we]re no reliable documents that verify what, if anything, Mr. Wilkins contributed to any of the claims of the ‘985 patent.” The FC opinion explained that the law requires an “inventor’s credible testimony” is “measured under a ‘rule of reason’ standard” which means that the testimony must be corroborated (Martek, FC 2009; Univ. Colo. FC 2003). The FC panel agreed with the DC that Wilkins could not provide any corroboration and “[t]he undisputed record confirms that the German inventors had already conceived of their invention before corresponding with Wilkins”. The DC decision was therefore affirmed.