Turbine OEMs keep patents, agree to cross-licensing of intellectual property
General Electric Co. and Mitsubishi Heavy Industries, Ltd. have mutually agreed to end longstanding legal battles surrounding wind turbine intellectual property, according to a statement from Mitsubishi Heavy Industries.
The two wind turbine manufacturers “have reached amicable settlement of all legal actions taken by both parties in the United States relating to alleged infringements of their patents on wind turbines,” the statement read. “As a result, all litigation under way relating to wind turbines has been dropped.”
The settlement involves a cross-licensing agreement in which each company grants use of its intellectual property to the other, while maintaining ownership of their respective patents. Both parties agreed not to disclose further details of the settlement, according to the statement.
The patent dispute dates back more than five years to February 2008, when GE petitioned the United States International Trade Commission (ITC) to investigate its claims that Mitsubishi Heavy Industries was importing wind turbines and components into the U.S. that infringed on three patents held by GE.
The patents in contention involved sustained operation of wind turbines without regard to changing wind speed and low voltage conditions, as well as severing a turbine’s connection to the electrical grid in the event of power fluctuations.
The ITC ruled in favor of Mitsubishi in early 2010. However, GE’s appeal to the U.S. Court of Appeals for the Federal Circuit led to a split decision handed down in February 2012. The appellate court upheld the ITC’s decision on one case, while overturning a second case—sending it back to the ITC for further review. The court ruled the third case as moot due to the fact that the patent had since expired.
Litigation continued, with GE filing a claim surrounding the alleged infringement in federal district court in Texas in 2009. The case was stayed. In 2012, GE secured a $170 million jury award against Mitsubishi in another lawsuit concerning a different set of wind turbine patents. Prior to that verdict, Mitsubishi brought an antitrust suit against GE in May 2010, claiming that GE had obtained patents fraudulently. The antitrust case was placed on hold pending the outcome of the patent litigation and prior to the December settlement.