{"id":60,"date":"2017-11-27T12:46:05","date_gmt":"2017-11-27T16:46:05","guid":{"rendered":"http:\/\/blogs.duanemorris.com\/greenip\/?p=60"},"modified":"2017-11-30T10:29:50","modified_gmt":"2017-11-30T14:29:50","slug":"vestas-fires-back-in-ge-wind-turbine-lawsuit","status":"publish","type":"post","link":"https:\/\/blogs.duanemorris.com\/greenip\/2017\/11\/27\/vestas-fires-back-in-ge-wind-turbine-lawsuit\/","title":{"rendered":"Vestas Fires Back in GE Wind Turbine Lawsuit"},"content":{"rendered":"<ul>\n<li>Vestas has responded to GE\u2019s patent infringement lawsuit with claims that GE engaged in inequitable conduct when obtaining a patent asserted in the lawsuit.<\/li>\n<li>If proven, inequitable conduct renders a patent unenforceable.<\/li>\n<\/ul>\n<p>Wind turbine giant Vestas has answered a patent infringement lawsuit brought by General Electric Co. with a counteroffensive, claiming GE committed inequitable conduct when obtaining one of the asserted patents from the U.S. Patent and Trademark Office (USPTO). Vestas additionally sought to have one of its corporate entities removed from the case altogether. (Our post explaining GE\u2019s lawsuit is available <a href=\"https:\/\/blogs.duanemorris.com\/greenip\/2017\/11\/21\/general-electric-expands-patent-fight-against-vestas\/\">here<\/a>).<!--more-->Inequitable conduct is often referred to as the \u201catomic bomb\u201d defense because of the enormous consequences it can carry. A successful inequitable conduct defense renders the entire patent unenforceable, potentially renders related patents unenforceable, and can even expose the patent owner to antitrust and unfair competition claims. A single finding of inequitable conduct therefore has the potential to destroy a significant portion of an intellectual property portfolio, and also tarnish the reputation of the companies and individuals involved in the misconduct.<\/p>\n<p>To prevail on a claim of inequitable conduct, a defendant must demonstrate that the patent applicant (A) withheld or misrepresented so-called \u201cmaterial\u201d information, and (B) did so with intent to deceive the USPTO. Material information is a prior art document (or documents) that is so similar to the invention that the USPTO would not have issued a patent to the patent applicant if it had known of the withheld prior art document(s).<\/p>\n<p>In making its case that GE committed inequitable conduct when obtaining one of the asserted patents, Vestas leans heavily on an earlier case: <em>General Electric v. Mitsubishi Heavy Industries<\/em>. In that case, Mitsubishi alleged \u2013 using publically-available documents and GE\u2019s private documents obtained through the litigation discovery process \u2013 that GE employees knew of material prior art documents but withheld them from the USPTO. Those GE employees included an inventor named on the patent, engineers who assisted with the patent application, and GE\u2019s Chief Intellectual Property attorney.<\/p>\n<p>Mitsubishi also brought forth evidence that GE\u2019s employees failed to disclose the prior art documents because they specifically intended to deceive the USPTO into believing that their patent application contained new and non-obvious material. (Remember, a patent applicant must demonstrate that an invention is new and non-obvious over existing technology to receive a patent. If GE\u2019s invention was not new and non-obvious it should not have been issued a patent). Such evidence included similarities between figures used in the prior art documents and in the patent application, GE\u2019s alleged use of \u201cselective disclosure\u201d (i.e. disclosing a small portion of prior art documents while withholding more relevant documents), and the \u201cunconvincing and at times contradictory\u201d testimony of GE\u2019s employees.<\/p>\n<p>The court in the <em>Mitsubishi<\/em> case seems to have agreed with Mitsubishi on most of the facts relating to inequitable conduct. However, the court felt that without \u201cconclusive documentation of a deliberate conspiracy\u201d or a \u201csmoking gun document\u201d it could not find that GE had committed inequitable conduct. Since Mitsubishi was unable to adequately prove inequitable conduct, it lost the case and a jury ordered the payment of $169M in damages to GE.<\/p>\n<p>Vestas alleges many of the same facts as Mitsubishi, namely that GE withheld key prior art documents from the USPTO that would have shown its invention in the asserted patent was not new. Although Mitsubishi\u2019s defense fell short, Vestas is hoping to use the same facts to better effect because it argues that the law of inequitable conduct has changed since the court decided the <em>Mitsubishi<\/em> case. Vestas reviews several recent cases in this area that found inequitable conduct despite lacking a \u201csmoking gun document.\u201d If Vestas can convince the court that the threshold for finding inequitable conduct has indeed been lowered since the <em>Mitsubishi<\/em> decision, and that GE\u2019s behavior exceeds the new, lower threshold, then it may defeat GE\u2019s infringement claim on this patent. The threat of an inequitable conduct finding and its outsize consequences are likely to be concerning to GE.<\/p>\n<p>Vestas also moved to dismiss one of its corporate entities from the lawsuit altogether. GE had sued both California-based Vestas-American Wind Technology, Inc. and the Danish company Vestas Wind Systems A\/S. Keep in mind that patents are only enforceable within a specific territorial jurisdiction; a U.S. Patent cannot reach infringing products in a foreign country unless and until those products are imported into the United States. Vestas claims that GE has no evidence of infringing activities on the part of its Danish corporation, and Vestas has therefore requested that the court remove Vestas Wind Systems A\/S as a party to the case. If the court grants that request, then the case will proceed with only Vestas-American as a defendant.<\/p>\n<p>This case continues to shape up as a battle of titans, as GE and Vestas collectively have more than 80% of the U.S. wind turbine industry.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>Vestas has responded to GE\u2019s patent infringement lawsuit with claims that GE engaged in inequitable conduct when obtaining a patent asserted in the lawsuit. If proven, inequitable conduct renders a patent unenforceable. Wind turbine giant Vestas has answered a patent infringement lawsuit brought by General Electric Co. with a counteroffensive, claiming GE committed inequitable conduct &hellip; <\/p>\n<p class=\"link-more\"><a href=\"https:\/\/blogs.duanemorris.com\/greenip\/2017\/11\/27\/vestas-fires-back-in-ge-wind-turbine-lawsuit\/\" class=\"more-link\">Continue reading<span class=\"screen-reader-text\"> &#8220;Vestas Fires Back in GE Wind Turbine Lawsuit&#8221;<\/span><\/a><\/p>\n","protected":false},"author":226,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[2],"tags":[25,22,6,7,24,17],"ppma_author":[122],"class_list":["post-60","post","type-post","status-publish","format-standard","hentry","category-general","tag-general-electric","tag-justus-getty","tag-patent","tag-patent-infringement","tag-vestas","tag-wind"],"authors":[{"term_id":122,"user_id":226,"is_guest":0,"slug":"jlgetty","display_name":"Justus Getty","avatar_url":"https:\/\/blogs.duanemorris.com\/greenip\/wp-content\/uploads\/sites\/36\/2017\/11\/gettyjustus-125x150.jpg","author_category":"","last_name":"Getty","first_name":"Justus","job_title":"","user_url":"http:\/\/www.duanemorris.com\/attorneys\/justuslgetty.html","description":"<a href=\"http:\/\/www.duanemorris.com\/attorneys\/justuslgetty.html\">Read Justus's bio.<\/a>"}],"_links":{"self":[{"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/posts\/60","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/users\/226"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/comments?post=60"}],"version-history":[{"count":0,"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/posts\/60\/revisions"}],"wp:attachment":[{"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/media?parent=60"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/categories?post=60"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/tags?post=60"},{"taxonomy":"author","embeddable":true,"href":"https:\/\/blogs.duanemorris.com\/greenip\/wp-json\/wp\/v2\/ppma_author?post=60"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}