On Friday, July 6, 2012, the United States Court of Appeals for the Federal Circuit issued a decision in General Electric Co. v. ITC. The Federal Circuit, per Judge Newman with Chief Judge Rader and Judge Linn, did not give GE a total victory, but victory enough over Mitsubishi. The Federal Circuit affirmed in part and reversed in part the original decision of the ITC, and remanded the case for further proceedings consistent with the decision.
GE appealed the decision of the United States International Trade Commission, which held that certain variable speed wind turbines imported by Mitsubishi Heavy Industries, Ltd. and Mitsubishi Power Systems Americas, Inc. (together “Mitsubishi”) did not violate section 337 of the Tariff Act, 19 U.S.C. §1337. The patents at issue were U.S. Patent No. 7,321,221, U.S. Patent No. 5,083,039 and U.S. Patent No. 6,921,985. On February 1, 2011, the ’039 patent expired, and the Federal Circuit dismissed that portion of the appeal as moot, vacating the Commission’s rulings relative to the ’039 patent. The appeal continued relating to the ‘221 patent and the ‘985 patent, which were the subject of this latest Federal Circuit decision.
As is always the case with the ITC, this matter started with the filing of a complaint and an investigation. Upon the filing of the complaint by GE an Administrative Law Judge at the ITC held an evidentiary hearing on all of the issues raised by General Electric, by Mitsubishi as respondent and by the Commission’s investigators. The ALJ’s final determination included 126 pages of findings of fact and conclusions of law. Ultimately, the ALJ held that section 337 was violated by the imported Mitsubishi turbines. The ALJ determined that the ’221 patent is not invalid by reason of obviousness; that the ’039 patent is not invalid by reason of obviousness, written description, or enablement; and that the ’985 patent is not invalid by reason of obviousness or best mode. The ALJ also determined that the three patents were infringed by the imported Mitsubishi wind turbines, and that the intent element of inequitable conduct as to the ’985 patent were not established. The ALJ also determined that the domestic industry requirement is not met as to the ’221 patent, but is met as to the ’039 and ’985 patents.
What is this part about domestic injury? “An owner of an intellectual property right, hoping to show that certain imported products violate the ITC’s Section 337, must show that the right is valid, enforceable and infringed,” says Scott Daniels of Westerman Hattori Daniels & Adrian and author of Reexamination Alert, an experienced ITC litigator just coming off a trial at the ITC. Daniels went on to say:
Additionally, the owner must show the existence of a domestic industry — specifically that there is an industry in the United States, relating to the articles protected by the patent exists or is in the process of being established. Over the years, the ITC has applied the standard in a lenient manner, so that many intellectual property right owners have been able to satisfy the “domestic industry requirement.” Two points are worth noting: first, that the authorized activities in the US of the owner’s licensees count toward proof of a domestic industry, and second, the nationality of the intellectual property right owner or its licensees is irrelevant to the issue of domestic industry. Accordingly, there are many ITC cases where the domestic industry is represented by a foreign company and the importer is a US company.
If there is a domestic industry and if the IP right is found to be valid, enforceable and infringed, injury to the domestic industry is presumed.
After the ALJ issued the final decision both GE and Mitsubishi requested review by the full Commission. The full Commission determined that the ’039 patent is not invalid by reason of obviousness or written description, that the ’039 and ’221 patents are not infringed by the Mitsubishi turbines, and that the domestic industry requirement is not met as to any of the patents. As you might expect, an appeal proceeded to the Federal Circuit.
First, the Federal Circuit (per Judge Newman) addressed the ’039 patent, which expired on February 1, 2011. This mooted the issues relating to that patent and the CAFC vacated the Commission’s rulings related to the ‘039 patent. The Federal Circuit proceeded to split the baby, so to speak, with respect to the remaining two patents, siding with Mitsubishi in on one and siding with GE on the other, which in effect gives GE a win because the importation would violate one patent that was valid and where domestic injury would be present. More specifically, the Federal Circuit affirmed the Commission’s ruling that the ’221 patent is not infringed, but reversed the Commission’s determination of no domestic industry as to the ’985 patent, and remand for further proceedings with respect to the ’985 patent.
With respect to the patent GE prevailed on, the ‘985 patent, the issue was one of claim construction. Did claim 15 of the ‘985 patent require that the circuit that shunts current on signal from the converter controller is located entirely outside of the inverter? Claim 15 reads as follows:
A wind turbine generator comprising:
a generator; a power converter coupled with the generator, the power converter having an inverter coupled to receive power from the generator, a converter con- troller coupled with the inverter to monitor a current flow in the inverter wherein the converter controller is coupled to receive power from an uninterruptible power supply during a low voltage event, and a circuit coupled with the input of the inverter and with the converter controller to shunt current from the inverter and generator rotor in response to a control signal from the converter controller.
(emphasis present in the CAFC decision).
The Commission had held that the shunt circuit must be separate from the inverter. The Commission ruled that “[General Electric’s] shunt circuit does not shunt current from the inverter because it is within the inverter.” The ALJ had reached a different conclusion, holding that “whether a particular shunting circuit located within the inverter (as opposed to outside it) meets the claim limitation will depend upon whether it is found to be ‘coupled with the input of the inverter and the converter controller,’ as required by the claim.” Ultimately, the ALJ held that the claim does not contain the additional requirement that the shunt circuit is located entirely outside of the inverter. The Federal Circuit agreed.
Judge Newman pointed out that the specification does not require that the components are entirely separate. The language used in the specification related to the presence of “a protective circuit that maintains currents within an allowable range,” col.4 ll.35-36, which does not require that the inverter and shunt circuits are entirely separate. Furthermore, Judge Newman explained that the specific language of claim 15 does not require physical separation of the shunt circuit from the inverter.
In attempting to explain what the Commission must have been thinking to reach its conclusion, Judge Newman pointed suggested:
The Commission apparently viewed the claim clause ‘shunt current from the inverter and generator rotor’ in isolation from its context as “a circuit coupled with the input of the inverter and with the converter controller.” However, the function of the shunt circuit does not depend on whether the shunt circuit is entirely outside of the inverter, and the ’985 specification does not require separation of the inverter and the shunt circuit in order for that circuit to be coupled with the input of the inverter and with the converter controller; rather, the term “coupled with” indicates a connection.
For support for this proposition Judge Newman cited Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 992 (Fed. Cir. 1999) , which said: “[C]oupled generically describes a connection, and does not require a mechanical or physical coupling.” She also further pointed out that a similar argument was made and ultimately rejected by the Federal Circuit in NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), where some claims recited a receiver “connected to” or “coupled to” a processor or that the receiver “transfers” information to the processor. In that case the accused infringer in NTP had argued that “connected to,” “coupled to,” and “transfer from” each required the receiver and the processor to be separate, but the Federal Circuit disagreed, concluding that “the two components could be connected, joined, or linked together by wires or other electrical conductors and still be located in the same housing or even on the same circuit board.” 418 F.3d at 1310-11.
As an electrical engineer I am a bit perplexed by this entire line. Not because it is incorrect, but rather because anyone would think to argue that “connected to” or “coupled to” would require physical separation. Judge Newman is exactly correct, as was the Court in Johnson Worldwide and NTP. Used in their ordinary way without modification to the accepted meaning by the specification there really is no other reasonable interpretation.
Ultimately, the Federal Circuit ruled that claim 15, correctly construed, covers the domestic industry turbines. Therefore, the full Commission erred in determining that General Electric did not meet the domestic industry requirement with respect to the ’985 patent.