United States Court of Appeals
for the Federal Circuit
______________________
GENERAL ELECTRIC COMPANY AND
GE WIND ENERGY, LLC,
Plaintiffs/Counterclaim Defendants-Appellees,
v.
THOMAS WILKINS,
Defendant/Counterclaimant-Appellant,
AND
MITSUBISHI HEAVY INDUSTRIES, LTD. AND
MITSUBISHI POWER SYSTEMS AMERICAS, INC.,
Counterclaimants.
______________________
2013-1170
______________________
Appeal from the United States District Court for the
Eastern District of California in No. 10-CV-0674, Judge
Lawrence J. O’Neill.
______________________
Decided: May 8, 2014
______________________
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, of Boston, Massachusetts, argued for plain-
tiffs/counterclaim defendants-appellees. With him on the
brief were RICHARD W. O’NEILL, ELIZABETH M. REILLY,
2 GENERAL ELECTRIC COMPANY v. WILKINS
LOUIS W. TOMPROS, and ANDREW J. DANFORD. Of counsel
was ALEXANDRA COTTER BOUDREAU.
DONALD R. DUNNER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
defendant/counterclaimant-appellant. With him on the
brief were THOMAS H. JENKINS, THOMAS W. WINLAND,
JEFFREY C. TOTTEN, and TYLER M. AKAGI. Of counsel on
the brief was ROGER D. TAYLOR, of Atlanta, Georgia.
______________________
Before LOURIE, TARANTO, and CHEN, Circuit Judges.
LOURIE, Circuit Judge.
Thomas 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. See Gen. Electric Co. v.
Wilkins, No. 10-0674, 2012 WL 5989349 (E.D. Cal. Nov.
29, 2012) (unpublished). Because Wilkins failed to prove
by clear and convincing evidence that he was entitled to
co-inventorship of the ’985 patent, we affirm.
BACKGROUND
Wind turbines convert wind into electrical energy that
is supplied to the power grid. Random events such as
lightning strikes and animal contacts can cause wires of
the power grid to short, resulting in a reduction in the
amount of voltage on the power grid. Such “low voltage
events” can damage nearby wind turbines, either by
causing the blades of a turbine to rotate out of control or
by causing electric current to back up into the generator
rotor of a turbine. Conventionally, wind turbines protect-
ed against those harms by disconnecting from the power
grid during a low voltage event. However, as wind began
GENERAL ELECTRIC COMPANY v. WILKINS 3
providing a greater percentage of the overall grid power,
utilities began to require that wind turbines remain
connected to the grid and continue to operate during a low
voltage event. The ability of wind turbines to meet that
requirement is known as “low voltage ride through”
(“LVRT”). ’985 patent col. 1 ll. 30–34.
GE’s ’985 patent names five co-inventors who were
each members of a team of GE engineers based in Salz-
bergen, Germany that was tasked with meeting the
standard of a German utility company, which required
wind turbines to ride through voltage drops down to 15%
of nominal voltage. Gen. Electric, 2012 WL 5989349, at
*4.
The ’985 patent is directed to controlling key compo-
nents of a wind turbine that would allow it to remain
connected to the power grid and to safely ride through a
low voltage event. ’985 patent col. 2 ll. 24–34. The LVRT
solution described in the ’985 patent involves: (i) a blade
pitch controller that varies the angles of the wind turbine
blades to maintain safe rotation speeds, id. col. 5 ll. 35–
47, col. 6 ll. 32–35; (ii) a converter controller that
“guard[s] against excessive currents in the inverters” by
selectively activating and deactivating a circuit to shunt
excess current away from the turbine’s sensitive compo-
nents, id. col. 4 ll. 32–39, col. 4 l. 65–col. 5 l. 11, col. 5 l.
66–col. 6 l. 4, col. 6 ll. 40–49; and (iii) a turbine controller
that provides overall control of the turbine and shuts
down nonessential components during a low voltage
event, id. col. 4 ll. 38–43, col. 5 ll. 55–65, col. 6 ll. 36–39.
The independent claims of the ’985 patent reflect
those specific controller functions. Claims 1 and 15 are
representative and read as follows:
1. A wind turbine generator comprising: a
blade pitch control system to vary a pitch of one or
more blades; a turbine controller coupled with the
blade pitch control system; a first power source
4 GENERAL ELECTRIC COMPANY v. WILKINS
coupled with the turbine controller and with the
blade pitch control system to provide power dur-
ing a first mode of operation; and an uninterrupti-
ble power supply coupled to the turbine controller
and with the blade pitch control system to provide
power during a low voltage event; wherein the
turbine controller causes the blade pitch control
system to vary the pitch of the one or more blades
in response to the transition in response to detec-
tion of a transition from the first mode of opera-
tion.
15. 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 controller 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 ro-
tor in response to a control signal from the con-
verter controller.
Id. col. 6 l. 65–col. 7 l. 13, col. 7 l. 58–col. 8 l. 3 (emphases
added). Each claim requires an uninterruptible power
supply (“UPS”), which powers the various controllers so
that they can perform their functions during a low voltage
event. Id. col. 4 ll. 32–43, col. 5 ll. 41–44. Wilkins is not
named as a co-inventor of the ’985 patent.
Wilkins began working for GE’s predecessor company
Enron Wind Corporation, doing business as Zond Wind
Energy Systems (“Enron”), in 1998. In the course of that
employment, Wilkins was involved in adapting wind
turbines to meet certain LVRT requirements at an Enron-
owned wind farm in Minnesota known as Lake Benton II.
GENERAL ELECTRIC COMPANY v. WILKINS 5
Gen. Electric, 2012 WL 5989349, at *3. After modifica-
tion, the Lake Benton II wind turbines were capable of
riding through voltage drops down to 70% of nominal
voltage. Although those turbines incorporated a small
capacitor that briefly powered one sensor during a grid
outage, that capacitor did not power the converter control-
ler during a low voltage event, nor did modification of the
Lake Benton II wind turbines contemplate blade pitch
control or a circuit that shunted excess current away from
the generator rotor and inverter in order to achieve
LVRT. Id. at *3–4. After GE acquired certain assets from
Enron, Wilkins worked as an engineer at a GE wind
turbine facility in Tehachapi, California.
It is undisputed that the German team had developed
detailed specifications and concept documents of its LVRT
solution by July 2002 and was planning a presentation to
review the technical details, including the use of control-
lers powered by a UPS, which were available for down-
load through an internal GE website. J.A. 4014–15.
Correspondence between Wilkins and two of the
named inventors in spring and summer of 2002 indicates
that the German team was consulting Wilkins for confir-
mation 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. Gen. Electric, 2012 WL 5989349, at
*5; J.A. 2031, 3171. In particular, the correspondence
revealed that the work done at Lake Benton II was not
interchangeable with the specifications and requirements
of the German LVRT design, and no mention was made of
a UPS coupled to a converter for the purpose of LVRT. Id.
Wilkins traveled to Germany in August 2002. Although
Wilkins admitted that no documents exist for that trip, he
alleged that he shared his ideas from Lake Benton II and
conveyed specific elements of the ’985 patent to the Ger-
man team at that time. Gen. Electric, 2012 WL 5989349,
at *5–6; J.A. 577.
6 GENERAL ELECTRIC COMPANY v. WILKINS
In 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 summa-
rized several ideas, along with a proposal to use a UPS.
J.A. 2310–21. The figures depicted in that Design and
Cost Analysis “reflect . . . [w]here to place the UPS in the
circuit” and show that the UPS was proposed to insulate
the wind turbine from the power grid during a low voltage
event by placing the UPS between the power grid and the
turbine. Id. In that arrangement, the turbine controller
and converter controller would be situated between the
grid and the UPS, and therefore could only receive power
from the grid during a low voltage event and not from the
UPS. Id. Wilkins admitted that the Design and Cost
Analysis does not show the UPS powering the wind
turbine’s blade pitch controller, and that, although the
document does discuss a shunting circuit, it is not the
selectively activating and deactivating circuit of the ’985
patent. Id.; 598–99. Wilkins left GE later in 2002.
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, including a patent infringement
case in the United States District Court for the Southern
District of Texas and an investigation before the United
States International Trade Commission (“ITC”). The ’985
patent is also one of the patents at issue in an antitrust
suit that Mitsubishi brought against GE in the United
States District Court for the Western District of Arkan-
sas.
In the ITC proceeding, Mitsubishi challenged the va-
lidity 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. Gen. Electric, 2012
GENERAL ELECTRIC COMPANY v. WILKINS 7
WL 5989349, at *9; J.A. 3975. 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. See Gen.
Electric Co. v. Int’l Trade Comm’n, 685 F.3d 1034, 1036
(Fed. Cir. 2012); J.A. 8330, 8336. The ITC did not review
the ALJ’s finding that there was no inequitable conduct,
and Mitsubishi did not challenge that determination on
appeal to this court. Id.
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 under which
Mitsubishi paid him $100,000 for an option to license the
’985 patent and an additional $200,000 for “consulting”
work. J.A. 3961–64. In return, Wilkins agreed to “take
all necessary and reasonable steps” to support Mitsubishi
in actions against GE regarding the ’985 patent. Id.
In due course, Mitsubishi exercised its option, and
during licensing negotiations Wilkins’s counsel demanded
significant additional funds for Wilkins to “stay in the
game” against GE, making clear that Mitsubishi’s offer of
$200,000 was “inadequate for Wilkins to keep his place at
the table.” Id. at 5019–21. Wilkins’s counsel promised
that Mitsubishi would have “every ability to coordinate
and manage Wilkins’ involvement to maximize
[Mitsubishi]’s position in the litigation” if it agreed to pay
more. Id. Mitsubishi consequently paid Wilkins a nonre-
fundable licensing fee of $1.5 million and retained an
option to extend that license upon payment of an addi-
8 GENERAL ELECTRIC COMPANY v. WILKINS
tional $1 million. Gen. Electric, 2012 WL 5989349, at *10;
J.A. 3967–69.
GE subsequently filed suit in the United States Dis-
trict Court for the Eastern District of California seeking
to quiet title to the ’985 and ’565 patents. Wilkins coun-
terclaimed, seeking (i) to be added as a named inventor of
the ’985 patent under 35 U.S.C. § 256 and (ii) a declara-
tion that he has an ownership interest in the ’985 and
’565 patents. Mitsubishi intervened and also filed coun-
terclaims seeking a declaration that Wilkins is a co-
inventor and co-owner of the ’985 patent.
The district court initially found that GE was likely to
prevail on its claims and preliminarily enjoined Wilkins
from licensing either of the patents in suit. Gen. Electric
Co. v. Wilkins, No. 10-0674, 2011 WL 1740420 (E.D. Cal.
May 5, 2011) (unpublished). After subsequently refusing
four times to take an unqualified oath to tell the truth at
his deposition, behavior that the court deemed “not ac-
ceptable,” Wilkins filed a declaration calling the district
court “obtuse,” “overly assumptive,” and “ignorant.” Gen.
Electric Co. v. Wilkins, No. 10-0674, 2011 WL 220240
(E.D. Cal. Jan. 21, 2011) (unpublished); J.A. 585, 5087,
9030–38, 9047. The district court eventually dismissed
GE’s ownership claims on summary judgment as time-
barred by the statute of limitations. Gen. Electric Co. v.
Wilkins, No. 10-0674, 2011 WL 3163348 (E.D. Cal. July
26, 2011) (unpublished). The court then conducted a
bench trial on Wilkins’s and Mitsubishi’s inventorship
counterclaims and held that they had failed to establish
that Wilkins co-invented the subject matter of any claim
of the ’985 patent. Gen. Electric, 2012 WL 5989349, at *1,
*12.
In reaching that conclusion, the district court deter-
mined that Wilkins had undermined his own credibility.
The court noted that Wilkins had received approximately
$2 million from Mitsubishi by the time of the trial and
GENERAL ELECTRIC COMPANY v. WILKINS 9
pointed to the documentary evidence showing that Wil-
kins had indeed demanded those substantial payments in
order for him to “stay in the game” so that Mitsubishi
could “manage” him. Id. at *9–10. The court thus con-
cluded that Wilkins was “biased,” “a purchased wit-
ness/party,” and “more concerned about gaining personal
advantage than testifying truthfully.” Id. at *3, *12. The
court found that Wilkins lacked credibility based on his
“purposefully evasive” responses to even basic questions,
noting that Wilkins was “repeatedly impeached during
cross-examination, to the point where the veracity of even
simple answers w[as] called into question.” Id. at *3. The
district court judge described Wilkins as “one of the worst
witnesses I have ever seen.” J.A. 842.
The district court analyzed all of the evidence pre-
sented, including: documents from Wilkins’s work at Lake
Benton II, upon which Wilkins had based his primary
inventorship theory; testimony from the German engi-
neers and Wilkins’s correspondence with them regarding
his 2002 work and trip; Wilkins’s Design and Cost Analy-
sis; and GE’s prosecution of the ’985 patent. Gen. Electric,
2012 WL 5989349, at *3–9. Based on its credibility
determination, factual findings, and review of the entire
record, the court concluded that Wilkins and Mitsubishi
had not carried their burden to prove inventorship by
clear and convincing evidence because, “[s]imply put,
there [we]re no reliable documents that verify what, if
anything, Mr. Wilkins contributed to any of the claims of
the ’985 patent.” Id. at *12.
Mitsubishi and Wilkins timely appealed. GE cross-
appealed from the summary judgment orders holding that
its quiet title claims were time-barred. By voluntary
dismissal, the appeal was terminated as to Mitsubishi, as
was GE’s cross-appeal. The record indicates that Wilkins
subsequently filed related suits in the United States
District Court for the Eastern District of California and
the State of California Superior Court for Orange County.
10 GENERAL ELECTRIC COMPANY v. WILKINS
In those cases, Wilkins has asserted claims for malicious
prosecution and abuse of process against GE and its
counsel in the district court action that is the subject of
this appeal, seeking $1.5 billion in damages from GE and
its counsel based upon their assertion of breach of con-
tract claims against Wilkins in the district court. The
district court in the instant case denied Wilkins’s motion
for sanctions premised on the same arguments underlying
those new complaints, but Wilkins did not appeal that
determination. Gen. Electric Co. v. Wilkins, No. 10-0674,
2012 WL 5387085 (E.D. Cal. Nov. 1, 2012) (unpublished).
We have jurisdiction in this appeal regarding inventor-
ship pursuant to 28 U.S.C. § 1295(a)(1).
DISCUSSION
Inventorship is a question of law, which we review
without deference. Ethicon, Inc. v. U.S. Surgical Corp.,
135 F.3d 1456, 1460 (Fed. Cir. 1998). We review the
district court’s underlying findings of fact for clear error.
Id. Because the issuance of a patent creates a presump-
tion 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, Hess v. Advanced Cardio-
vascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997)
(citing Garrett Corp. v. United States, 190 Ct. Cl. 858, 422
F.2d 874, 880 (1970)). Credibility determinations are
entitled to strong deference. See Celsis In Vitro, Inc. v.
CellzDirect, Inc., 664 F.3d 922, 929 (Fed. Cir. 2012);
Baxter Int’l, Inc. v. McGaw, Inc., 149 F.3d 1321, 1330
(Fed. Cir. 1998).
Although Wilkins admits that his credibility was im-
peached, he asserts that those instances of impeachment
only extended to immaterial and tangential points and
notes that the ALJ did not criticize Wilkins’s credibility in
the previous ITC action. Appellant Br. 59–60. Wilkins
argues that the district court erred in concluding that he
GENERAL ELECTRIC COMPANY v. WILKINS 11
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 to the claims. Wil-
kins further contends that the Design and Cost Analysis
is among the corroborating evidence that the court did not
analyze as a whole under the rule of reason standard.
Wilkins maintains that he is an inventor because that
conception document meets every limitation of the inde-
pendent claims; he asserts that he conceived of using a
UPS as claimed for LVRT and that the claims of the ’985
patent do not limit the location of the UPS.
GE responds that Wilkins’s impeachment went to core
issues including the work that he supposedly did and the
interactions that he supposedly had with the named
inventors. GE contends that the district court correctly
applied the rule of reason standard, but that Wilkins did
not first provide any credible testimony for the court to
corroborate.
We agree with both GE and the district court that, in
light of all the record evidence, Wilkins did not prove his
inventorship claim by clear and convincing evidence
because he did not present any credible testimony that
could be corroborated. 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. Martek
Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1374
(Fed. Cir. 2009). 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.
See, e.g., Univ. of Colo. Found., Inc. v. Am. Cyanamid Co.,
342 F.3d 1298, 1308–09 (Fed. Cir. 2003) (rejecting inven-
torship theory based upon putative inventor’s discredited
12 GENERAL ELECTRIC COMPANY v. WILKINS
testimony). The very purpose of the rule of reason re-
quirement is to verify the credibility of a putative inven-
tor’s story. Loral Fairchild Corp. v. Matsushita Elec.
Indus. Co., 266 F.3d 1358, 1364 (Fed. Cir. 2001); Ethicon,
135 F.3d at 1461; Price v. Symsek, 988 F.2d 1187, 1195
(Fed. Cir. 1993) (“An evaluation of all pertinent evidence
must be made so that a sound determination of the credi-
bility of the inventor’s story may be reached.”).
The district court found that Wilkins was biased,
based in part on his financial relationship with
Mitsubishi. Gen. Electric, 2012 WL 5989349, at *3, *9–10.
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. Id. at *9–
10; J.A. 5019–21. 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.” Gen.
Electric, 2012 WL 5989349, at *3. Based on the trial
record, we find no clear error in the district court’s as-
sessment that the substance of Wilkins’s testimony, which
addressed central issues such as conception and contribu-
tion, was inconsistent and purposefully evasive. We agree
with the district court’s conclusion that Wilkins left his
case with no credibility.
Although Wilkins is correct that the ALJ did not criti-
cize Wilkins’s credibility in the previous ITC action, that
ITC decision was made without the benefit of the com-
plete factual record, including the relationship between
Wilkins and Mitsubishi, and without observing the shift-
ing and inconsistent testimony that he repeatedly provid-
ed at the district court trial. The ALJ’s findings, made
only in the context of an inequitable conduct analysis, are
insufficient to overcome the district court’s credibility
GENERAL ELECTRIC COMPANY v. WILKINS 13
determinations in this proceeding concerning correction of
inventorship.
Accordingly, without credible testimony from Wilkins,
there was nothing to corroborate. And although there
was no need for the district court to assess any corroborat-
ing evidence, the court nevertheless carefully and thor-
oughly 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. The district court expressly assessed
witness testimony and dozens of supposedly corroborating
documents, including Wilkins’s Lake Benton II docu-
ments, the 2002 correspondence between Wilkins and the
named German inventors, Wilkins’s October 2002 Design
and Cost Analysis, and documents from GE’s prosecution
of the ’985 patent. Gen. Electric, 2012 WL 5989349, at
*3–9. We see no error in the district court’s analysis of
that evidence.
Moreover, we find no merit in Wilkins’s suggestion
that the district court should be faulted because its opin-
ion does not specifically address every admitted trial
exhibit. A district court need not write an opinion that
expressly discusses every admitted exhibit. See Medtron-
ic, Inc. v. Daig Corp., 789 F.2d 903, 906 (Fed. Cir. 1986)
(recognizing that a district court need not provide a
“complete discussion of all possible permutations and
combinations” of the evidence because we “presume that a
fact finder reviews all evidence presented unless he
explicitly expresses otherwise”). But even so, the district
court’s opinion in this case makes clear that it did take all
of the admitted evidence into account in reaching its
decision. The court concluded “that the heavy burden of
proof by clear and convincing evidence has not been met,
and therefore that Mr. Wilkins should not be named a co-
inventor of the ’985 patent” after “[h]aving considered the
evidence presented at trial and the parties’ proposed
14 GENERAL ELECTRIC COMPANY v. WILKINS
findings of fact and conclusions of law submitted after
trial.” Gen. Electric, 2012 WL 5989349, at *1.
Similarly, the district court did not err simply be-
cause, after cataloging the many problems with each piece
of purportedly corroborating evidence proffered by Wil-
kins, it did not expressly dismiss that same evidence for
the second time “as a whole.” See, e.g., Symantec Corp. v.
Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1295–96 (Fed.
Cir. 2008) (rejecting inventorship claim after individually
addressing flaws with each piece of corroborating evi-
dence); Woodland Trust v. Flowertree Nursery, Inc., 148
F.3d 1368, 1373 (Fed. Cir. 1998) (noting that the district
court appropriately excluded evidence “lacking detail and
clarity” from its rule of reason analysis). The district
court considered the entire record and found that it did
not support Wilkins’s inventorship claim. Wilkins does
not argue that any of those factual findings were clearly
erroneous, and we likewise identify no clear error. Wil-
kins’s argument depends on a selective reading of the
record, which ignores facts that are unhelpful to his case
and is in itself contrary to a proper rule of reason analy-
sis.
Although Wilkins appears to have relied on his work
at Lake Benton II when advocating his inventorship
theory before the tribunals below, he suggests now that
the October 2002 Design and Cost Analysis that he pre-
pared for Florida Power and Light clearly and convincing-
ly demonstrates his contribution to the German team’s
LVRT solution and the claims of the ’985 patent, viz., use
of a UPS. Notwithstanding that the record is devoid of
proof that the German engineers relied on anything
discussed in that document as part of their conception and
that Wilkins provided no credible testimony for that
document to corroborate, our review of the record verifies
that the district court did not clearly err in finding that
the document does not disclose any of the subject matter
claimed in the ’985 patent.
GENERAL ELECTRIC COMPANY v. WILKINS 15
Record evidence confirms that Wilkins collected ideas
from many different collaborating GE sources when
preparing the Design and Cost Analysis. J.A. 2365–66.
Wilkins himself conceded that the idea to use a UPS to
perform LVRT was not novel in 2002. Id. at 591–92.
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. Fina Oil & Chem. Co. v. Ewen, 123 F.3d
1466, 1473 (Fed. Cir. 1997) (“[A] person will not be a co-
inventor if he or she does no more than explain to the real
inventors concepts that are well known and the current
state of the art.”). As the district court noted, Wilkins did
not invent or contribute to the use of the circuit recited in
claim 15 of the ’985 patent to protect the converter by
shunting current away from the sensitive components of
the wind turbine system. Gen. Electric, 2012 WL
5989349, at *6; J.A. 570–71, 596–97. And the prosecution
history of the ’985 patent shows that it was the combina-
tion of a UPS and such a circuit that allowed GE to over-
come a prior art rejection in getting its claims allowed.
J.A. 3530–31, 3779, 3782–83.
Moreover, on its face, the Design and Cost Analysis
does not even depict the key feature Wilkins claims to
have invented, i.e., a UPS powering the wind turbine’s
three controllers. As discussed above, the plain language
of the ’985 patent claims requires the UPS to be “coupled
to” the requisite controllers to provide power during a low
voltage event. See, e.g., ’985 patent col. 7 ll. 6–8, 64–66.
But the figures in Wilkins’s Design and Cost Analysis
depict the turbine controller and converter controller
situated between the power grid and the UPS so that they
could only receive power from the grid during a low volt-
age event and not from the UPS, which is depicted as
situated to insulate the other components of the wind
turbine from the grid. J.A. 2320. Furthermore, Wilkins
16 GENERAL ELECTRIC COMPANY v. WILKINS
admitted that his Design and Cost Analysis does not show
the UPS powering the wind turbine’s blade pitch control-
ler. Id. at 598–99. The district court thus did not clearly
err in concluding that the Design and Cost Analysis did
not recite the UPS limitations claimed in the ’985 patent.
A co-inventor “must contribute in some significant
manner to the conception or reduction to practice of the
invention [and] make contribution to the claimed inven-
tion that is not insignificant in quality, when that contri-
bution is measured against the dimension of the full
invention.” Nartron Corp. v. Schukra U.S.A. Inc., 558
F.3d 1352, 1356–57 (Fed. Cir. 2009). Wilkins’s evidence is
bereft of any such proof. The undisputed record confirms
that the German inventors had already conceived of their
controller-based LVRT solution before corresponding with
Wilkins to discuss American grid requirements or meet-
ing with Wilkins in Germany. See Symantec, 522 F.3d at
1296 (holding that evidence of discussions between named
inventor and putative co-inventor concerning subject
matter of claimed invention was insufficient to establish
co-inventorship); Eli Lilly & Co. v. Aradigm Corp., 376
F.3d 1352, 1363–64 (Fed. Cir. 2004) (same); Hess, 106
F.3d at 980–81 (same).
CONCLUSION
For the foregoing reasons, we conclude that the dis-
trict 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.
AFFIRMED