750 F.3d 1324
Fed. Cir.2014Background
- The ’985 patent (GE) claims an LVRT (low voltage ride through) controller-based system for wind turbines requiring an uninterruptible power supply (UPS) to power blade pitch, converter, and turbine controllers during low-voltage grid events.
- Wilkins, a former Enron/GE engineer, worked on LVRT-related modifications at Lake Benton II (able to ride through to ~70% voltage) and later produced an October 2002 "Design and Cost Analysis" proposing use and placement of a UPS for an FPL project.
- German GE inventors had developed detailed LVRT specifications (including controllers powered by a UPS) by July 2002; they consulted Wilkins about U.S. (60 Hz) compatibility and Wilkins visited Germany in August 2002.
- Wilkins was not named on the ’985 patent; he later worked for Mitsubishi to challenge the patent and was paid substantial sums (roughly $2M total) and received a licensing fee of $1.5M. Mitsubishi pressed claims that Wilkins was a co-inventor.
- GE sued to quiet title; district court held a bench trial on Wilkins’s inventorship counterclaim and found Wilkins failed to prove co-inventorship by clear and convincing evidence, citing severe credibility problems and lack of corroboration. Court entered declaratory judgment for GE; the Federal Circuit affirmed.
Issues
| Issue | Wilkins' Argument | GE's Argument | Held |
|---|---|---|---|
| Whether Wilkins is a co-inventor of the ’985 patent under 35 U.S.C. § 256 | Wilkins contended he conceived claim limitations (use of a UPS for LVRT) and that his October 2002 Design and Cost Analysis corroborates conception of claimed features | GE argued the named German inventors conceived the claimed invention before Wilkins’s input; Wilkins’s testimony lacked credibility and his documents do not disclose the claimed UPS coupling to controllers | Wilkins failed to prove co-inventorship by clear and convincing evidence; affirmed the district court’s denial of inventorship relief |
| Whether Wilkins’s testimony and documents satisfied the rule-of-reason corroboration requirement | Wilkins asserted his testimony and Design and Cost Analysis met corroboration and corresponded to claim limitations | GE countered that Wilkins’s testimony was evasive, biased (financial relationship with Mitsubishi), and documents do not disclose claimed UPS-controller coupling or inventive shunt circuit | Court held threshold credible testimony was lacking; therefore corroboration was unnecessary and the documentary evidence did not meet clear-and-convincing standard |
| Whether prior administrative finding (ITC ALJ) that Wilkins was co-inventor requires a different result | Wilkins noted the ALJ had found him a co-inventor in an inequitable-conduct context | GE noted ITC decision lacked full record and did not address credibility shown at district trial; GE relied on district court findings | Court found ALJ’s determination insufficient to overcome district court’s credibility findings and affirmed district court |
| Whether Wilkins’s alleged contribution (idea to use a UPS) alone qualifies for co-inventorship | Wilkins claimed the UPS idea was his inventive contribution | GE argued the UPS idea was not new in 2002 and Wilkins did not contribute the inventive combination (UPS plus shunting circuit powering controllers) that overcame prior art | Court held mere suggestion of a known concept (UPS) is insufficient; no significant contribution to claimed invention shown |
Key Cases Cited
- Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456 (Fed. Cir.) (inventorship is a question of law; factual findings reviewed for clear error)
- Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976 (Fed. Cir.) (patent issuance creates presumption that named inventors are correct; challenger must prove misjoinder by clear and convincing evidence)
- Garrett Corp. v. United States, 422 F.2d 874 (Ct. Cl.) (burden of proving inventorship is heavy)
- Celsis In Vitro, Inc. v. CellzDirect, Inc., 664 F.3d 922 (Fed. Cir.) (credibility determinations entitled to strong deference)
- Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321 (Fed. Cir.) (credibility and factual findings review standards)
- Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363 (Fed. Cir.) (corroboration of inventor testimony measured by the rule of reason)
- Univ. of Colo. Found., Inc. v. Am. Cyanamid Co., 342 F.3d 1298 (Fed. Cir.) (rejection where putative inventor’s testimony was discredited)
- Loral Fairchild Corp. v. Matsushita Elec. Indus. Co., 266 F.3d 1358 (Fed. Cir.) (rule of reason verifies inventor’s story)
- Price v. Symsek, 988 F.2d 1187 (Fed. Cir.) (all pertinent evidence must be evaluated for credibility)
- Medtronic, Inc. v. Daig Corp., 789 F.2d 903 (Fed. Cir.) (factfinder presumed to have considered all evidence absent express statement otherwise)
- Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279 (Fed. Cir.) (discussions with putative co-inventor insufficient when named inventors already conceived invention)
- Woodland Trust v. Flowertree Nursery, Inc., 148 F.3d 1368 (Fed. Cir.) (exclude corroboration lacking detail and clarity)
- Fina Oil & Chem. Co. v. Ewen, 123 F.3d 1466 (Fed. Cir.) (a person who only explains known concepts is not a co-inventor)
- Nartron Corp. v. Schukra U.S.A. Inc., 558 F.3d 1352 (Fed. Cir.) (co-inventor must contribute significantly to conception measured against whole invention)
- Eli Lilly & Co. v. Aradigm Corp., 376 F.3d 1352 (Fed. Cir.) (evidence of consultation alone insufficient to establish co-inventorship)