Braking Wind: Court Stays Mitsubishi-GE Wind Patent Antitrust Case


In a previous post, I wrote about Mitsubishi’s wind patent-based antitrust suit against GE. 

In this case, Mitsubishi has alleged that GE filed baseless lawsuits against Mitsubishi asserting patents GE knows are invalid as part of an anticompetitive scheme to monopolize the U.S. market for variable speed wind turbines. 

Mitsubishi further alleges that all five of the patents involved in those suits were procured or enforced through fraud.  Those patents are U.S. Patent Nos. 5,083,039, 6,921,985, 7,321,221, 6,879,055 and 7,629,705 .

The infringement suits at issue include a 2008 investigation in the U.S. International Trade Commission (ITC), a suit brought by GE in September 2009 in the Southern District of Texas and an action GE initiated in February in the Northern District of Texas.

Last month Judge J. Leon Holmes of the U.S. District Court for the Western District of Arkansas granted GE’s motion to stay the antitrust case pending resolution of the subject patent infringement actions.  Judge Holmes denied GE’s motion to dismiss the antitrust case.

A stay is “warranted,” according to the Opinion and Order (mitsubishi-ge_order.pdf), because a victory by GE in any of the subject patent infringement actions would render the antitrust case moot and demonstrate that Mitsubishi’s antitrust claims lack merit:

First, if GE prevails in any of the infringement actions, then Mitsubishi’s claims in this action will be moot because GE will have the right to exclude Mitsubishi from the market. . . .Secondly, a final victory by GE in either of the infringement actions would establish that the action was not sham litigation because ‘[a] winning lawsuit is by definition a reasonable effort at petitioning for redress and therefore not a sham.’

On the motion to dismiss, GE contended that Mitsubishi’s antitrust claims were baseless because GE had achieved some preliminary success in its ITC case in an administrative law judge’s (ALJ) initial decision, later reversed in part, that found Mitsubishi had infringed GE’s patents. 

GE also asserted that Mitsubishi did not plead its fraud allegations with sufficient particularity.

The Opinion noted that the ALJ decision may be evidence that the ITC case was not a sham, but is not conclusive on the issue. 

Judge Holmes further held that Mitsubishi had adequately pleaded the fraud allegations because it identified each patent application asserted to be fraudulent and which aspects of the patent applications were allegedly fraudulent.

Though Judge Holmes has put the brakes on this case, there is still plenty of action between GE and Mitsubishi:  the ITC case is currently on appeal before the Federal Circuit, the case filed in the Northern District of Texas is going forward, and Mitsubishi recently brought its own wind patent infringement suit against GE in Florida.

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Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.