Feb. 29 (Bloomberg) -- General Electric Co., the biggest U.S. maker of wind turbines, won a partial appeals-court victory in a patent-infringement case against Mitsubishi Heavy Industries Ltd.
A federal appeals court ordered the U.S. International Trade Commission to review whether Mitsubishi Heavy violated GE’s rights under one patent, while affirming a decision that there was no infringement of a second patent. The decision was posted today on the website of the U.S. Court of Appeals for the Federal Circuit.
GE seeks to block Tokyo-based Mitsubishi Heavy from bringing its turbine parts into the U.S. The companies are in the midst of a trial in Dallas over whether Mitsubishi is infringing a different GE patent, for a way to keep turbines connected to utility grids during voltage fluctuations without sustaining damage. That trial may last through next week.
“GE will continue to take the necessary steps to protect its significant investment in technological research and development in the U.S. and around the world,” Chet Lasell, a spokesman for GE, said in a statement.
Each company said it was pleased with the part of the case it won, disappointed in the part it didn’t, and confident it would ultimately prevail. Mitsubishi said the U.S. Patent and Trademark Office is taking a second look at the patent to determine whether it should have been issued.
‘Cascade of Litigation’
“These decisions remind the renewable energy industry, Congress and the public at large that GE has been relying on a cascade of litigation to maintain a monopoly in the wind turbine market,” Mitsubishi said in a statement. “GE’s marathon return to the courthouse is the most revealing evidence of its strategy that it wants to keep competitors out of the wind turbine market.”
At stake is dominance in a market where GE makes about half of all wind turbines installed. The U.S. has the second-largest amount of wind capacity in the world behind China, according to a Feb. 7 report by the global Wind Energy Council.
GE originally claimed Mitsubishi’s turbines infringed three patents related to technology that ensures a consistent flow of electricity to the grid no matter the wind speed. One patent expired Feb. 1, 2011, and was dropped from the case.
GE can still pursue past royalties through a separate civil suit that it filed against Mitsubishi in federal court in Corpus Christi, Texas.
Cleared of Claim
Mitsubishi was cleared in today’s decision of a claim it infringed a patent covering equipment that prevents wind turbines from being damaged by irregular electricity flow.
On the second patent, for a way to steady the stream of energy from the turbine to the electrical grid, the ITC had ruled GE wasn’t using the invention. The agency requires that patent owners be using the invention in some way before it will protect the legal rights, a requirement that doesn’t appear in civil courts.
The federal circuit said the ITC, in its determination that GE wasn’t using the invention, erred in its analysis of what the patent covered. It sent the case back to the agency for further proceedings on that patent.
A victory for Fairfield, Connecticut-based GE may prevent Mitsubishi from importing turbine components into the U.S. until the patent expires in 2023.
In a separate action, Mitsubishi filed an antitrust lawsuit in Arkansas accusing GE of trying to monopolize the wind-turbine market. That suit is on hold, pending the outcome of the GE patent cases, including the federal appeal.
The appeal is General Electric v. ITC, 10-1223, U.S. Court of Appeals for the Federal Circuit (Washington). The ITC case is In the Matter of Certain Variable Speed Wind Turbines and Components Thereof, 337-641, U.S. International Trade Commission (Washington).
The civil cases are General Electric Co. v. Mitsubishi Heavy Industries Ltd., 09cv229, U.S. District Court for the Southern District of Texas (Corpus Christi) and General Electric Co. v. Mitsubishi Heavy Industries Ltd., 10cv276, U.S. District Court for the Northern District of Texas (Dallas).
The antitrust case is Mitsubishi Heavy Industries Ltd. v. General Electric Co., 10cv5087, U.S. District Court for the Western District of Arkansas (Fayetteville). Mitsubishi’s case against GE is Mitsubishi Heavy Industries Ltd. v. General Electric Co., 10cv812, U.S. District Court for the Middle District of Florida (Orlando).
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