On May 14, 2009, ALJ Carl C. Charneski issued the public versions of Order No. 37 (dated May 6, 2009) and Order No. 40 (dated May 7, 2009) in Certain Variable Speed Wind Turbines And Components Thereof (337-TA-641).  In the Orders, ALJ Charneski denied Respondents Mitsubishi Heavy Industries, Ltd., Mitsubishi Heavy Industries America, Inc., and Mitsubishi Power Systems Americas, Inc.’s (collectively, “MHI”) motions in limine seeking orders to preclude complainant General Electric Company (“GE”) from offering certain evidence relating to alleged inequitable conduct committed during prosecution of the patents-in-suit.

According to Order No. 37, MHI sought to preclude an analysis performed by GE regarding a German Patent Office search report relating to a German patent application that corresponds to one of the U.S. patents being asserted by GE in the investigation.  Specifically, MHI sought to preclude GE from offering evidence purporting to show good faith in connection with its alleged failure to disclose the German Patent Office search report and references cited therein to the U.S. Patent and Trademark Office (“USPTO”).  ALJ Charneski denied MHI’s motion, determining that the facts were scarce and, to the extent they existed, such facts were in dispute.  ALJ Charneski further determined that MHI would be permitted to renew its objections at the evidentiary hearing.

In Order No. 40, MHI sought to preclude evidence purporting to show good faith in removing Thomas Wilkins as an inventor of one of the U.S. patents being asserted by GE in the investigation and evidence that Mr. Wilkins had an obligation to assign his patent to GE at the time the application for the patent was filed with the USPTO.  ALJ Charneski denied MHI’s motion and determined that MHI would be permitted to renew its objections at the evidentiary hearing.