Gen. Elec. Co. v. Wilkins, No. 13-1170 (Fed. Cir. 2014)Annotate this Case
Lightning strikes and animal contacts can cause wires of the power grid to short. Such “low voltage events” can damage wind turbines, which previously disconnected from the grid during a low voltage event. As wind began providing a greater percentage of overall power, utilities began to require low voltage ride-through. GE’s 985 patent, directed to controlling components of a wind turbine that would allow it to remain connected to the grid and to safely ride through a low voltage event, names five co-inventors who were based in Germany. Wilkins is not named. Wilkins was involved in adapting wind turbines to meet certain requirements in the U.S. The German team consulted Wilkins for confirmation that their invention would work with U.S. grid. Wilkins left GE in 2002. The 985 patent is asserted by GE against Mitsubishi in several lawsuits. Mitsubishi challenged the validity of the patent and hired Wilkins, who worked 1,000 hours in an effort to invalidate the 985 patent. Mitsubishi also argued that the patent was unenforceable because GE intentionally failed to name Wilkins as a co-inventor. The administrative law judge found that Wilkins had co-invented the patent but that GE did not intend to deceive the PTO. Later, Wilkins asserted ownership rights in the 985 patent and another patent. Wilkins entered into additional agreements with Mitsubishi and was paid more than $1.5 million. GE sought to quiet title to the patents. Wilkins counterclaimed. After refusing to take an unqualified oath to tell the truth at his deposition, behavior that the court deemed “not acceptable,” Wilkins filed a declaration calling the court “ignorant.” The district court dismissed GE’s ownership claims as time-barred and held that Wilkins and Mitsubishi failed to establish that Wilkins co-invented any claim of the 985 patent. The Federal Circuit affirmed, noting that Wilkins had filed additional claims for malicious prosecution and abuse of process against GE and its counsel.