Patent Watch: General Elec. Co. v. Int'l Trade Comm'n

Alerts / July 16, 2012

The domestic industry requirement is not negated if the technology as employed in the domestic industry has been modified from its form when the patent was obtained.

On July 6, 2012, in General Elec. Co. v. Int'l Trade Comm'n, the Federal Circuit granted the Commission's petition for a panel rehearing and issued a new opinion replacing its February 29, 2012, opinion. The Federal Circuit affirmed-in-part, vacated-in-part, reversed-in-part and remanded the Commission's decision that certain variable speed wind turbines imported by Mitsubishi did not violate 19 U.S.C. §1337 for failure to meet the domestic injury requirement with respect to U.S. Patents No. 7,321,221, No. 5,083,039 and No. 6,921,985. The Federal Circuit stated:

For infringement, every element and limitation of a claim of the patent must be found in the accused device, literally or in accordance with the doctrine of equivalents. It is not disputed that the Mitsubishi turbines do not measure current or voltage in determining when to resume the feed-in connection after decoupling has occurred. The record contains expert testimony on the question of whether a preset time period in the Mitsubishi turbines is an adequate proxy for current. The experts for both sides agreed that there is no predictable relationship between the duration of low-voltage events and the restoration of safe current levels because of the variety of factors that can affect such events and their duration. The experts' testimony supports the Commission's finding that a predetermined value of time "cannot serve as an adequate proxy for current because the relationship between the two cannot be guaranteed." We affirm the Commission's finding that the Mitsubishi turbine, whereby recoupling occurs after a preset period of time, does not literally infringe the '221 claims.

General Electric argued that even if there is not literal infringement, the doctrine of equivalents applies because the system in the '221 patent and the Mitsubishi system perform substantially the same function in substantially the same way to achieve the same result, whether recoupling is measured by current drop or by the passage of time. The Commission found that a system that measures when the specific emergency event has actually ended is not substantially the same as a system that applies the same time period to all emergency events. This finding was supported by substantial evidence in the form of the experts' testimony with respect to the technological facts. The Commission's determination that the Mitsubishi turbines do not infringe the '221 patent under the doctrine of equivalents is affirmed.

In view of our affirmance of noninfringement of the '221 patent, we affirm that section 337 is not violated based on the '221 patent. Although the Commission also ruled that General Electric's turbines do not now practice the '221 invention and therefore do not meet the domestic industry requirement as to this patent, we do not reach that aspect, and vacate the Commission's ruling thereon.

The '985 patent is directed to wind turbine circuitry that provides a stable output of electricity to the grid during low voltage events. The Commission construed the '985 patent claim 15, the only claim at issue, in a manner that excluded the General Electric turbines from the scope of the claim, and on this claim construction the Commission held that there is no domestic industry as to the '985 patent. . . . The issue of claim construction was whether claim 15 requires that the circuit that shunts current on signal from the converter controller is located entirely outside of the inverter. . . . We conclude that claim 15 requires that the circuit is coupled with the input of the inverter and the converter controller, whereby the current is shunted from the inverter and the rotor; this requirement does not limit the placement of the shunting circuitry to a location entirely external to the inverter. "[T]here is nothing in the claim language or specification that supports narrowly construing the terms to require a specific structural requirement or entirely distinct [circuits]. Rather, the [circuits] must only perform their stated functions."

Mitsubishi also argues that the General Electric turbines embody a modification of the circuitry system in the '985 patent, and that this modification is separately patented in General Electric's U.S. Patent No. 7,239,036. Mitsubishi states that if General Electric's turbines practice the subject matter claimed in a separate patent, they cannot practice the invention of the '985 patent. That is not correct, for a separately patented invention may indeed be within the scope of the claims of a dominating patent. The scope of the '985 patent is determined on its own terms, independent of whether other aspects or modifications of the technology are separately patented. The domestic industry requirement is not negated if the technology as employed in the domestic industry has been modified from its form when the patent was obtained. We conclude that claim 15, correctly construed, covers the domestic industry turbines. The Commission erred in determining that General Electric does not meet the domestic industry requirement with respect to the '985 patent. That ruling is reversed.

If you have questions about the material presented above, please contact Dr. Lawrence M. Sung ( or 202.861.1537) or any member of our Intellectual Property Team.

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