A previous post discussed one of GE’s more recent wind patent infringement suits against Mitsubishi. 

Filed in the Northern District of Texas in Dallas, the complaint (gecomplaint.pdf) alleges that Mitsubishi’s 2.4 megawatt wind turbine infringes U.S. Patent Nos. 6,879,055 (’055 Patent) and 7,629,705 (’705 Patent).  The ’055 Patent is directed to a two-part base frame for arranging a drive train on the tower of a wind turbine.

The ’705 Patent relates to methods of facilitating zero voltage ride through so the turbine can remain online during voltage dips down to zero volts.

The patented systems and methods include a phase-locked loop (PLL) regulator to receive voltage measurement signals from a plurality of voltage transducers.  The PLL regulator includes a PLL that receives the sinusoidal voltage measurement signals.

If a voltage amplitude is outside a pre-determined range, an algorithm within the PLL generates a control signal and the PLL regulator changes to a different mode or state of operation.  A plurality of states of operation are possible, with varying parameters such as gain constants.

According to the ’705 Patent:

the plurality of states of operation facilitate zero voltage ride through (ZVRT) as well as other grid faults while also facilitating normal operation.   

GE recently survived a motion for summary judgment in which Mitsubishi argued (1) that it does not infringe the ’705 Patent and (2) that the patent is invalid based on a prior sale of the patented technology, lack of enablement of claim 1 of the patent, and that claim 1 is anticipated by a prior art patent application.

The court denied the motion and rejected all of Mitsubishi’s arguments (GE_Order).

Key to the infringement ruling was the court’s prior construction of claim 1 of the ’705 Patent, which requires that the wind turbine be configured to remain connected during and after grid-voltage fluctuations for “an undetermined period of time.”  This term was construed to mean “an indeterminable or unknowable period of time.”

Mitsubishi noted that its wind turbine rides through grid disturbances lasting less than a predetermined period of time and disconnects when the disturbance lasts longer than that predetermined time period.  Therefore, it argued, the turbine does not literally infringe claim 1 of the ’705 Patent because it does not remain connected during and after fluctuations lasting for “an undetermined period of time.”

However, in construing claim 1, the court also held that the “undetermined period of time” refers to the voltage fluctuation taking place on the grid itself, not the connection between the grid and the wind turbine.  Thus, the time period a wind turbine remains connected to the grid is not dispositive of infringement of the ’705 Patent:

As such, the Court has already determined that the claim term “undetermined period of time” does not necessarily foreclose wind turbines that impose limits on the period of time the machine remains connected while the voltage is outside of the predefined range.  Therefore, the Court cannot decide as a matter of law that Mitsubishi’s turbines do not infringe the patent literally or under the doctrine of equivalents.

On invalidity, Mitsubishi first argued that GE offered to sell the technology of the ’705 Patent more than a year before filing the patent application.  For a patent to be invalid based on a prior sale, the product has to be the subject of a commercial offer for sale, and the invention must have been ready for patenting. 

The parties did not dispute that two sales contracts before the critical one-year date were for the later-patented turbines.  However, GE showed that pre-critical date descriptions of the invention did not include certain important features of the invention, such as gain and limit values, and later modifications added converter shutdown to the zero voltage ride through methodology. 

Accordingly, the court held that Mitsubishi could not show that the technology of claim 1 of the ’705 Patent was ready for patenting and denied the motion for invalidity based on prior sale. 

Mitsubishi also came up short on its enablement argument and couldn’t demonstrate that a prior art patent application anticipated the type of connectivity recited by claim 1 of the ’705 Patent.

So this case will move forward, perhaps to trial.  This is just one of several suits in a large legal battle between these wind turbine rivals.  The disputes also include patent infringement allegations and antitrust claims by Mitsubishi.

In a previous post, I discussed the IP litigation in China between American Superconductor (AMSC) and Chinese wind energy system maker Sinovel.

The dispute centers on allegations that Sinovel misappropriated AMSC’s software code for controlling wind turbines and power converters.  

Last year, a former AMSC employee pled guilty to charges of passing portions of AMSC’s wind turbine control software source code to Sinovel.  The control software was developed by AMSC for use with Sinovel’s 1.5MW wind turbines.

AMSC accuses Sinovel of unauthorized use of the turbine control software source code and the binary code, or upper layer, of its software for the PM3000 power converters in the 1.5 MW turbines.

AMSC also believes the former employee illegally used the source code to develop a software modification so Sinovel could circumvent the encryption and remove technical protection measures on certain power converters used with the turbines.

The litigation has involved four separate actions by AMSC in various forums in China.

Recently, there were rulings in two of those actions.  In the first, the Hainan Province No. 1 Intermediate People’s Court dismissed AMSC’s copyright infringement suit filed there in September.

The decision was on jurisdictional grounds after Sinovel filed a motion to dismiss in December.  According to AMSC President and CEO Daniel McGahn, the action was AMSC’s smallest case, in which the company had requested about $200,000 in damages as well as a cease and desist order.  McGahn said AMSC would appeal the ruling (see the Recharge piece here).

The second ruling went AMSC’s way.  The Beijing No. 1 Intermediate People’s Court denied Sinovel’s motion to strike AMSC’s copyright action and have the case transferred to the Beijing Arbitration Commission.  This action involves a $6 million damages claim by AMSC (see the Windpower Monthly article here).

A third action, involving trade secrets claims, is pending in the Beijing Higher People’s Court.  AMSC is seeking over $450 million in damages in that case.

Finally, AMSC continues to pursue its contractual disputes with Sinovel in the Beijing Arbitration Commission.

According to experts interviewed for this Greentech Media piece, a critical weakness in AMSC’s case is that the company’s contract with Sinovel did not specify the amount of damages it would be entitled to in the event of a breach.

Perhaps AMSC’s four-pronged litigation approach is a way to hedge its bets in an uncertain Chinese IP enforcement environment.  For technology companies around the world that want to do business in China, this is an important dispute to watch.