Mitsubishi and General Electric have settled a patent infringement dispute involving wind turbine technology by agreeing to cross-license their patents.
GE, the largest US manufacturer of wind turbines, first filed a complaint with the US International Trade Commission (ITC) in 2008, alleging that Mitsubishi’s 2.4 megawatt turbines infringed GE patents.
GE then filed a civil suit in federal district court in Texas in 2009, and another suit in 2010. Mitsubishi countersued GE in federal courts in Arkansas and Florida. All of these actions have been dropped as a result of the settlement.
In 2012, in the case filed in the Northern District of Texas, a jury found that Mitsubishi had infringed a GE patent and the Japanese company was ordered to pay GE $170 million in patent infringement damages.
In May of 2013, a federal judge rejected Mitsubishi’s claim that GE’s turbine patent was invalid due to GE’s allegedly inequitable conduct. The judge held that Mitsubishi had failed to prove that GE intentionally withheld information about prior art when it applied for its US Patent Number 7,629,705, for technology which helps turbines stay online during disturbances in the power grid.
The judge also said that if the US Patent and Trademark office (USPTO) had known of the alleged prior art it might not have granted the GE patent. He said that there was some evidence GE knew of, but failed to disclose, its competitors’ patents but no “smoking gun” to show that GE had deliberately deceived the USPTO.
Mitsubishi appealed that decision to the Federal Circuit, contending that the district court had applied the wrong legal standard for inequitable conduct in patent cases.