In Wind Patent War, Mitsubishi Fires Back at GE with Antitrust and Patent Infringement Suits

June 7th, 2010 by Eric Lane Leave a reply »

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In previous posts (here, here and here) I’ve discussed GE’s wind power patent suits against its Japanese rival Mitsubishi. 

Mitsubishi struck back recently with a lawsuit of its own accusing GE of violating U.S. antitrust laws (see Mitsubishi’s press release here). 

The complaint (mitsubishi_antitrust_complaint.pdf), filed in federal court in Arkansas, alleges that GE has engaged in an anticompetitive scheme to monopolize the U.S. market for variable speed wind turbines.

According to the allegations, GE has been trying to intimidate Mitsubishi’s potential customers through “serial” baseless claims of patent infringement and public statements about Mitsubishi’s alleged infringement.

The complaint further alleges that GE’s intimidation tactics included advising Mitsubishi’s customers to take licenses to GE patents or risk infringement suits.  Sonia Williams, a Mitsubishi spokeswoman, said that GE was seeking “exorbitant licensing fees.” 

Mitsubishi claims that GE’s alleged scheme has worked as Mitsubishi’s $2 billion in annual U.S. sales of variable speed wind turbines has dropped to zero since initiation of the first patent infringement suit.

The alleged anticompetitive behavior centers on what Mitsubishi says are sham lawsuits asserting variable speed wind turbine patents that GE allegedly knew were invalid.

According to Mitsubishi, U.S. Patent No. 5,083,039 (’039 Patent), which GE acquired in 2002 from Enron’s bankruptcy estate, is invalid in view of GE’s own prior art report on work the company did in the 1980′s as part of a U.S. government funded program.

This particular prior art was not previously raised despite two investigations in the U.S. International Trade Commission (ITC) involving the ’039 Patent.  One reason for this is that the first ITC case, between Kenetech/Zond and Enercon, was based on claim 131 of the ’039 Patent while Mitsubishi’s invalidity assertion involves claim 121.

Mitsubishi’s complaint also questions the validity and enforceability of other patents GE has asserted, including U.S. Patent Nos. 7,321,221 (’221 Patent) and 6,921,985 (’985 Patent). 

Specifically, Mitsubishi alleges that GE withheld material prior art from the U.S. Patent and Trademark Office during prosecution of the application that issued as the ’221 Patent and knowingly omitted an inventor from the application that issued as the ’985 Patent. 

The same day it filed the antitrust suit, Mitsubishi also fired off a patent infringement complaint (mitsubishi_complaint.pdf) in the Middle District of Florida, accusing GE of infringing U.S. Patent No. 7,452,185, entitled “Blade-pitch-angle control device and wind power generator.”

Interestingly, this is not the first green patent war that reached a climax in an antitrust suit.  After years of global litigation between LED rivals Nichia and Seoul Semiconductor (Seoul), Seoul accused Nichia of repeatedly filing baseless patent suits to squeeze it out of the market for white side-view LEDs (see my post here).

Shortly thereafter, Nichia and Seoul announced a global settlement

Perhaps green patent history will repeat itself.  The two new Mitsubishi suits may increase Mitsubishi’s leverage and lead the parties to the negotiating table. 

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