Archive for September, 2009
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class="post-614 post type-post status-publish format-standard hentry category-green-patents category-ip-litigation category-wind-power">
September 27th, 2009
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The General Electric Company (GE) is the U.S. leader in installed wind capacity, and patent enforcement plays a part in that success.  Earlier this month GE sued Mitsubishi in the Southern District of Texas, alleging that its Japanese competitor’s 2.4MW turbine models infringe U.S. Patent Nos. 5,083,039 (‘039 Patent), 6,921,985 (‘985 Patent) and 7,321,221 (‘221 Patent).
The complaint (ge_complaint.pdf) cites the sale and installation of Mitsubishi’s turbines at the Penascal and Gulf Wind wind farms in Kenedy County, Texas as infringing activities.
The asserted patents relate to energy conversion and control technology for wind turbines. The ‘039 Patent, which issued back in 1992, is directed to a variable speed wind turbine that provides responsive control of generator torque. The patented turbine controls the torque reacted by the generators (16, 18) by controlling the stator currents or voltages and basing commands on turbine performance parameters.

Shaft speed sensors (42, 44) monitor the rotor speed of the generators and supply rotor speed information to the generator controllers (38, 40) and to a torque command device (46). Specifically, the torque command device (46) monitors wind turbine performance parameters and sends torque control signals to the generator cotrollers (38, 40) and pitch angle control signals to a pitch control unit (48).Â
The ‘985 Patent is directed to a wind turbine that includes a blade pitch control system and a turbine controller coupled with the blade pitch control system. To increase the reliability of the turbine’s power supply, the turbine controller causes the blade pitch control system to vary pitch in response to transitions between different power sources.
The ‘221 Patent is directed to improved methods for stabilizing the supply voltage to a wind turbine after voltage drops without jeopardizing the electrical components of the turbine. According to the ‘221 Patent, a key step in the patented method is to resume feeding of the rotor current after variations in voltage amplitude cause decoupling of the feed-in unit.
This lawsuit appears to be the second part of a two-pronged strategy to enforce these patents against Mitsubishi. As mentioned in the complaint, GE obtained an initial favorable decision from the U.S. International Trade Commission (ITC) that Mitsubishi had not successfully challenged the validity and enforceability of these patents and that the accused wind turbines infringe the patents (ge_itc_initial_determination.pdf) (see the CleanIP blog post here).
The ITC action and this new federal court case squeeze Mitsubishi both with respect to importation of its turbines at the U.S. border and as to domestically produced equipment.
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class="post-610 post type-post status-publish format-standard hentry category-green-patents category-hybrid-vehicles category-ip-litigation">
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A U.S. patent historically has provided its owner with an almost absolute right to exclude others from making, using, selling and offering to sell the patented product. That all changed with the U.S. Supreme Court’s eBay v. MercExchange decision in 2006.
In eBay the Supreme Court reversed the U.S. courts’ long-standing practice of automatically issuing an injunction upon a finding of patent infringement and instead held that the traditional four-factor equitable test for injunctive relief must be analyzed in each case.
The timing of the eBay decision couldn’t have been worse for hybrid technology company Paice, LLC (Paice). Back in 2005, Paice sued Toyota in the Eastern District of Texas alleging that the second generation Prius, the Highlander and the Lexus RX400h sport utility vehicle infringed U.S. Patent Nos. 5,343,970 (‘970 Patent), 6,209,672 and 6,554,088.Â
In December of 2005, a jury found that the accused vehicles did not literally infringe Paice’s patents but did infringe two claims of the ‘970 Patent under the doctrine of equivalents. The jury awarded about $4.3 million in past damages.
Having succeeded on infringement, Paice moved for a permanent injunction. Less than a month after the hearing on the injunction motion, but before the district court ruled on it, the Supreme Court handed down the eBay decision.
The court was now bound to analyze the four injunction factors.  As a result, the court refused to grant an injunction, instead awarding Paice an ongoing royalty of $25 per infringing vehicle (a figure that was later raised to $98 per vehicle).
As of the date of this writing, two other district court cases between Paice and Toyota over hybrid vehicle technology remain pending in the U.S. district courts.
Denied an injunction by the district court, the court-imposed ongoing royalty affirmed in principle by the Federal Circuit, Paice has pursued Toyota but hasn’t gotten any exclusion satisfaction out of its hybrid vehicle patents.Â
That may be about to change.
Earlier this month, Paice filed a complaint in the U.S. International Trade Commisson (ITC) asking the ITC to investigate whether Toyota’s importation of the third generation Prius, the Camry Hybrid, the Lexus HS250h and RX450h (Accused Products)Â infringe the ‘970 Patent.
The ITC is a federal agency that investigates trade and importation issues, including conducting quasi-judicial proceedings involving alleged infringement of intellectual property rights by importation of accused products pursuant to 19 U.S.C. § 1337. It is a popular forum for patentees (though only injunctive relief is available, not monetary damages) because the proceedings progress much faster than those in the federal courts.
According to the complaint (paice_itc_complaint.pdf), Toyota has made judicial admissions in the form of discovery responses and stipulations in the prior district court actions that the drivetrains of the Accused Products are materially the same as those that were found to infringe the ‘970 Patent.
Moreover, Paice asserts, Toyota is precluded from challenging the infringement, validity and enforceability of the ‘970 Patent because those issues were “fully and finally litigated against Toyota” in the district court, giving rise to collateral estoppel.Â
Paice further asserts that res judicata also precludes Toyota from challenging infringement of the ‘970 Patent because the Accused Products are materially identical to the vehicles found to be infringing in the district court case.
According to Paice, that leaves only issues relating to “domestic industry,” which all ITC complainants must prove.  Section 337 requires there be an industry in the U.S. relating to the products at issue. This includes an economic prong (demonstrated investment in plant/equipment, labor/capital, research and development or licensing) and a technical prong (demonstrated practice of the asserted intellectual property right).
Paice alleges it meets the domestic industry requirement because of its engineering, research and development activities and its licensing activities in the U.S.
Paice is requesting a permanent limited exclusion order barring entry into the U.S. of the Prius, Camry hybrid and the two accused Lexus models. With this ITC action, Paice is ratcheting up the pressure on Toyota to pay a large sum in settlement and/or licensing fees.Â
Considering what’s at stake here, I’m surprised the Paice complaint hasn’t gotten more media attention. I don’t think it’s an exaggeration to say this could be the Blackberry case of clean tech and one of the biggest green patent stories we’ve seen so far.