05
Mar
By Barry Herman
Further to our January 9, 2010 post, on March 2, 2010, the ITC issued the public version of its opinion finding that there has been no violation of Section 337 in Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641).

By way of background, the Complainant in this investigation is General Electric Co. (“GE”) and the Respondents are Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc. (“MHIA”), and Mitsubishi Power System, Inc. (“MPSA”) (collectively, “MHI”).  On August 7, 2009, ALJ Carl C. Charneski issued the Initial Determination (“ID”) finding that a violation of Section 337 had occurred by Mitsubishi Heavy Industries, Ltd. and MPSA with respect to claim 121 of the asserted ‘039 patent, and claim 15 of the asserted ‘985 patent.  ALJ Charneski further determined in the ID that there was no violation with respect to these claims by MHIA.  Additionally, ALJ Charneski determined in the ID that there was no violation of Section 337 by any party with respect to claims 5, 7, and 8 of the asserted ‘221 patent.  See our October 29, 2009 post for more details.  On October 8, 2009, the Commission issued a notice determining to review the ID, except the issue of importation and the intent finding underlying the ALJ’s inequitable conduct determination.  See our October 8, 2009 post for more details.  The imported products are variable speed wind turbines and the specialized power circuits that allow them to safely adapt to modern power grids.  The patents-in-suit each deal with problems encountered with attaching the turbines to the power grids.

In its opinion, the Commission reversed the ALJ’s determination of violation of Section 337 with respect to the ‘039 and ‘985 patents, and affirmed the ALJ’s determination of no violation with respect to the ‘221 patent.  The Commission also found no infringement of the ‘039 and ‘221 patents, and that GE failed to satisfy the domestic industry requirement with respect to the ‘985 patent.

The ‘039 Patent

The Commission first reviewed the ALJ’s determination that the phrase “inverter controller means” of claim 121 was not a means-plus-function claim term.  ALJ Charneski had reasoned that sufficient structure was present in claim 121 because one of ordinary skill in the art would understand the meaning of “inverter controller,” relying on the testimony of GE’s expert.  However, the Commission found that the testimony did not establish that one of ordinary skill would know how to program the computer to achieve this function other than by looking at the specification, and thus claim 121 falls under 35 U.S.C. 112 ¶ 6.  The Commission also reviewed the ALJ’s determination that the phrase “inverter for supplying output electricity” did not contain a limitation that the inverter be located on the grid- or line-side of the generator (as opposed to the generator-side), finding that the term “output” indicates that the claim phrase in fact refers to an inverter on the line-side from which the electricity for the grid emerges.

The Commission then reviewed the ALJ’s determination that the accused products practice claim 121 literally, finding that the converter control unit (“CCU”) in the imported turbines does not perform the function of the “inverter controller means” because it is not responsive to a power factor control signal within the meaning of the patent, and does not operate using a structure that is the same or equivalent to the power factor controller and inverter control unit disclosed in the patent.  The Commission also found that the accused products do not literally meet the “inverter for supplying output electricity” limitation because the inverter in the imported turbines is not on the line-side of the generator and does not supply output AC to the grid.

Regarding the doctrine of equivalents, the Commission found that the CCU in the accused products was not equivalent to the claimed “inverter controller means” limitation, agreeing with MHI that its CCU operates differently because it controls the active switches of the rotor-side converter and did not perform the claimed function of controlling the active switches of an inverter for supplying output energy.  The Commission also found that the MHI CCU was not equivalent to the claimed “inverter for supplying output electricity,” agreeing with MHI that the rotor-side inverter was not equivalent to the grid-side inverter because the former does not supply output AC electricity despite supplying reactive power, and because the rotor-side inverter supplies power at an angle that varies.

The Commission reversed ALJ Charneski’s determination that GE satisfied the domestic industry requirement for the ‘039 patent.  Because it was undisputed that there was no difference between the GE products and MHI products for the purposes of analyzing whether the products were covered by the ‘039 patent, the Commission found that GE had not satisfied the technical prong of the domestic industry requirement for the same reasons that it found that MHI did not literally infringe claim 121.

Although the Commission affirmed ALJ Charneski’s determination that claim 121 was adequately described in the specification, it noted that ALJ Charneski analyzed written description under an incorrect claim construction.  According to the Commission, once “inverter control means” was understood as a means-plus-function claim, then it was construed as possessing the corresponding structure of the specification and equivalents thereof, and thus was adequately described in the patent.  The Commission took no position on enablement because the parties did not focus their arguments on the issue.

With respect to obviousness, the Commission did not take issue with ALJ Charneski’s analysis that none of the prior art suggested output of electricity at a desired power factor angle in response to a power factor control signal, or how to achieve this.

The ‘221 Patent

The Commission reviewed ALJ Charneski’s determination that the term “predetermined value” in claim 5 is not dependent solely on the value of current, finding ALJ Charneski’s construction erroneous in light of the plain language of the claim, the specification, and expert testimony.  The Commission instead construed “predetermined value” as a value of current, and thus found that claim 5 requires the turbine to measure current or an adequate proxy thereof to determine whether the current has declined to a level previously decided upon.

Next, the Commission reviewed ALJ Charneski’s determination that the accused products literally met each limitation of claims 5, 7 and 8, particularly the “predetermined value” limitation of the “emergency unit” in independent claim 5.  The Commission reversed ALJ Charneski on the grounds that the imported turbines did not measure an adequate proxy for current as required by the claims.  The Commission also reversed ALJ Charneski’s determination of infringement under the doctrine of equivalents, finding no evidence that the accused products achieve the release of rotor current feed-in when the current drops to a predetermined value “in the sense that it coincides with a decline to a predetermined value of current.”

As to the domestic industry requirement, the Commission affirmed ALJ Charneski’s determination that GE did not prove that it satisfied the “releasing” limitation of claim 5, either literally or under the doctrine of equivalents.  Thus, GE did not satisfy the technical prong of the domestic industry requirement, and the Commission therefore found no violation of Section 337 with respect to the ‘221 patent.

The ‘985 Patent

The Commission did not review ALJ Charneski’s finding of no deceptive intent by the patentee in failing to name Thomas Wilkins as an inventor of the ‘985 patent, and thus determined that GE did not commit inequitable conduct.  However, MHI argued that GE lacked standing to assert the ‘985 patent based on ALJ Charneski’s finding that Wilkins was a proper inventor who was improperly left off the final patent application.  The Commission disagreed, finding that although Wilkins was an unnamed inventor and GE provided no showing that he had an obligation to assign the patent to GE (nor did GE join Wilkins as a party to the investigation), Wilkins is nevertheless not named on the patent and therefore lacks such legal title as to make him a co-owner of the patent.  The Commission further found that Wilkins has an equitable interest that can be perfected to legal title upon application to the USPTO or through correction by a district court under 35 U.S.C. § 256, but that the Commission lacked the authority to correct inventorship under any statutory provision.

The Commission reviewed the ALJ’s determination that the limitation “shunt current from the inverter and generator rotor” in claim 15 cannot require a crowbar or other shunting circuit between the rotor and the rotor-side converter, finding that the shunt circuit cannot be within the inverter and still shunt current “from” the inverter, and thus construing the term to mean that the shunt circuit is not located within the converter.  Because the shunt circuit in GE’s turbine did not shunt current from the inverter because it was located within the inverter, the Commission found that GE did not literally satisfy this requirement of claim 15.  The Commission further found that GE did not satisfy the function/way/result test for equivalence, in particular because of the manner by which the switches inside the GE inverter shunt the circuit.  Moreover, the Commission noted that the purpose of the shunt was to protect the inverter from high currents, whereas the components that the ‘985 patent sought to protect were being subjected to high current in the GE turbines.  Thus, the Commission found that GE did not practice the asserted claim of the ‘985 patent and therefore did not satisfy the domestic industry requirement with respect thereto.  The Commission took no position on the other disputed issues raised with respect to the ‘985 patent.
Share