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GE and various divisions of Mitsubishi have been involved in a number of lawsuits since 2007, when Mitsubishi Heavy Industries Ltd. entered into contracts with U.S. wind developers to sell its turbines in the U.S.

Many of the disputes center around a number of GE-owned patents for wind turbine technology. In its suits, GE contends that Mitsubishi is improperly using GE's patented technology in wind turbines sold or offered for sale in the U.S. by Mitsubishi.

Initially, GE filed a number of suits against Mitsubishi. Later, Mitsubishi filed suits of its own against GE. One suit filed by GE was with the International Trade Commission (ITC) in 2008. After an unfavorable outcome with the ITC, GE appealed the ITC decision to the federal circuit.

GE also filed suit against Mitsubishi in the U.S. District Courts for the Northern District of Texas in 2010 and for the Southern District of Texas in 2009. While the case in the U.S. District Court in the Southern District of Texas has been put on hold pending the outcome of the case with the ITC, some significant movement occurred recently with regard to the other two pending cases.

Shortly after the unfavorable ruling by the commissioners of the ITC in 2010, GE filed a lawsuit in the U.S. District Court for the Northern District of Texas, contending that Mitsubishi violated two U.S. patents held by GE.

After a seven-day trial, the jury issued a verdict on March 8, 2012, that Mitsubishi violated one of those two GE patents. The patent at issue in this case involves zero-voltage ride-through, which allows a turbine to remain online during voltage dips that reduce the voltage to zero. The jury awarded damages in the amount of almost $170.2 million to compensate GE for lost sales and reasonable royalties. Mitsubishi announced that it plans to appeal the verdict.

Cases that go before the ITC, if successful, allow a company to prevent infringing products and technology from entering the U.S. by having government resources police such products at the U.S. border. Cases that are filed with the ITC tend to be resolved more quickly and for a lower cost than cases filed with federal courts. As in this case, suits may be filed with both the ITC and a federal court simultaneously.

The case GE brought before the ITC in 2008 was centered on three patents held by GE. (The suit filed by GE in the U.S. District Court for the Southern District of Texas covered the same three GE patents.) Initially, GE was successful when an administrative law judge (ALJ) at the ITC found in favor of GE with respect to two of the three GE patents.

However, after the commissioners of the ITC reviewed the ALJ’s decision, the ruling was reversed as to the two GE patents, and GE’s case was dismissed. GE appealed the decision in 2010 by bringing suit against the ITC before the Federal Circuit. On Feb. 29, the federal circuit partially overturned the ITC’s ruling by holding that one of the patents in dispute did, in fact, meet a threshold requirement.

In light of the federal circuit’s decision as to that particular patent (dealing with low-voltage ride-through), the ITC must now consider several issues - such as whether Mitsubishi violated GE’s patent rights, if the patent is valid and whether there has been any inequitable conduct - before it can issue a new ruling.

The ITC had not previously addressed these other issues with regard to the patent because, in its view, the threshold requirement failed.

Patent protection
The disputes between GE and Mitsubishi are far from over, but the decisions discussed above show movement, albeit gradual, toward an ultimate resolution in the GE-initiated suits.

Both companies are devoting tremendous resources, especially in terms of money and manpower, to resolve these disputes in their favor. There are hundreds of millions, if not billions, of dollars at stake in this dispute.

Disputes such as this one exemplify the importance of patent protection in the area of wind power technologies. This case also exemplifies how companies can have different views involving the same facts and that the time for resolving these disputes, if a bilateral agreement cannot be reached between the parties, can be quite lengthy.

Timothy Smith and Rajesh Patel are patent attorneys at Houston-based King & Spalding. They can be reached at tmsmith© and rdpatel©, respectively.

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