05/16/2014

GE v. Wilkins: No Co-Inventorship After Credibility Undermined in Court


Category: Inventorship 
 
 
 
 By: Jesus Hernandez, Blog Editor/Contributor 
 
TitleGen. Electric Co. v. Wilkins, No. 13-1170 (Fed. Cir. May 8, 2014).
IssueWilkins argues that the district court erred in concluding that he is not a co-inventor of GE’s ’985 patent because the court did not compare the conception described in Wilkins’s Design and Cost Analysis document [which was introduced as corroborating evidence of inventorship].
Gen. Electric Co. at *10-11 (text added).
HoldingWilkins did not prove his inventorship claim by clear and convincing evidence because he did not present any credible testimony that could be corroborated [since Wilkins was biased due to a financial arrangement with another party and all his answers to questions during litigation were purposefully evasive].
Id. at *11 (text added).
 
Procedural HistoryThomas A. Wilkins (“Wilkins”) appeals from the decision of the United States District Court for the East- ern District of California entering declaratory judgment in favor of General Electric Company and GE Wind Energy, LLC (collectively “GE”) that Wilkins is not a co- inventor of GE’s U.S. Patent 6,921,985 (the “’985 patent”) pursuant to 35 U.S.C. § 256. […]
Gen. Electric Co. at *3 (internal citations omitted).
 
 
 
Legal Reasoning (Lourie, Taranto, Chen) (per curiam)
Background
Relevant Facts “GE’s ’985 patent names five co-inventors who were each members of a team of GE engineers based in Salzbergen, Germany that was tasked with meeting the standard of a German utility company […]” Gen. Electric Co. at *3. “Correspondence between Wilkins and two of the named inventors in spring and summer of 2002 indicates that the German team was consulting Wilkins for confirmation that their invention, which was then implemented on German wind turbines, would work with the different '60 Hz' grid requirements and turbine components used in the United States. […] Wilkins traveled to Germany in August 2002.” Id. at *5. “[Thereafter] [i]n October 2002, Wilkins and a team of GE engineers in California were tasked with developing an LVRT solution for the utility company Florida Power and Light. In the course of that work, Wilkins prepared a document entitled “Design and Cost Analysis,” in which he summarized several ideas, along with a proposal to use a UPS.” Id. at *6.
Related Litigation“The ’985 patent is one of several asserted by GE against Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems Americas, Inc. (collectively “Mitsubishi”) in at least two lawsuits […]” Gen. Electric Co. at *6. “In [an] ITC proceeding, Mitsubishi challenged the validity of the ’985 patent and hired Wilkins to search for relevant prior art. Wilkins worked approximately 1,000 hours in an effort to invalidate the ’985 patent, for which he received approximately $200,000.” Id. “Mitsubishi also argued that the ’985 patent was unenforceable based on a claim that GE intentionally failed to name Wilkins as a co- inventor. The administrative law judge (“ALJ”) rejected that argument, concluding that Wilkins had co-invented the ’985 patent but finding that GE did not intend to deceive the United States Patent and Trademark Office by failing to name Wilkins as a co-inventor.” Id. at *7 (internal citations omitted).
Quiet Title“Following the ITC proceedings, Wilkins averred that he retained ownership rights in the ’985 patent and U.S. Patent 6,924,565 (the “’565 patent”), which is directed to continuous reactive power support for wind turbine generators that GE prosecuted in Wilkins’s name after he left the company. Wilkins subsequently entered into another set of agreements with Mitsubishi [regarding licensing of the patent] […]” Gen. Electric Co. at *7. “GE subsequently filed suit in the United States District Court for the Eastern District of California seeking to quiet title to the ’985 and ’565 patents.” Id. at *8.
Analysis
Legal Standard: Inventorship
Because the issuance of a patent creates a presumption that the named inventors are the true and only inventors, id., the burden of showing misjoinder or non- joinder of inventors is a heavy one and must be proved by clear and convincing evidence, […]. Credibility determinations are entitled to strong deference. […]
Gen. Electric Co. at *10 (internal citations omitted).
In order to guard “against courts being deceived by inventors who may be tempted to mischaracterize the events of the past through their testimony,” the law requires corroboration of a putative inventor’s credible testimony, the sufficiency of which is measured under a “rule of reason” standard. […] Therefore, as a threshold matter, in order for the rule of reason requirement to even apply there must be some evidence that a fact-finder can find reasonable; the putative inventor must first provide credible testimony that only then must be corroborated. […]
Id. at *11 (citations omitted).
ImpeachmentThe district court found that Wilkins was biased, based in part on his financial relationship with Mitsubishi. […] The court’s determination is supported by documentary evidence showing that Wilkins demanded and received substantial payments in order for him to “stay in the game” so that Mitsubishi could “manage” him. [...] The court also found that Wilkins further undermined his own credibility while testifying at trial because his responses to even basic questions were “purposefully evasive” and he was “repeatedly impeached during cross-examination, to the point where the veracity of even simple answers w[as] called into question.” [...] Based on the trial record, we find no clear error in the district court’s assessment that the substance of Wilkins’s testimony, which addressed central issues such as conception and contribution, was inconsistent and purposefully evasive.
Id. at *12 (internal citations omitted).
Effect of ITC FindingsAlthough Wilkins is correct that the ALJ did not criticize Wilkins’s credibility in the previous ITC action, that ITC decision was made without the benefit of the complete factual record, including the relationship between Wilkins and Mitsubishi, and without observing the shifting and inconsistent testimony that he repeatedly provided at the district court trial.
Id. at *12.
Proffered Evidence was Also Unpersuasive
Accordingly, without credible testimony from Wilkins, there was nothing to corroborate. And although there was no need for the district court to assess any corroborating evidence, the court nevertheless carefully and thoroughly analyzed all of the evidence presented under the rule of reason standard and concluded that it did not contain clear and convincing evidence showing that Wilkins made any inventive contribution to the claims of the ’985 patent.
Id. at *13.
Record evidence confirms that Wilkins collected ideas from many different collaborating GE sources when preparing the Design and Cost Analysis. [...] Wilkins himself conceded that the idea to use a UPS to perform LVRT was not novel in 2002. [...] Accordingly, if all Wilkins allegedly contributed to the ’985 patent was the idea to use a UPS, then he would have contributed nothing beyond what was already known in the art. That is not sufficient to name Wilkins as a co-inventor. […]
Id. at *15 (internal citations omitted).
Conclusion
For the foregoing reasons, we conclude that the district court did not err in determining that the heavy burden of proof by clear and convincing evidence was not met, and therefore that Wilkins should not be named a co- inventor of the ’985 patent. The judgment of the district court is therefore affirmed.
Gen. Electric Co. at *16.
 
 
 
 
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