Citations
- 946 F. Supp. 2d 582
Full opinion text
FINDINGS OF FACTS AND CONCLUSIONS OF LAW IN FAVOR OF PLAINTIFF GENERAL ELECTRIC
ROYAL FURGESON, Senior District Judge.
Table of Contents
I. Background............................................................586
II. Policy Underlying The Inequitable Conduct Doctrine........................588
III. Standard for Finding Inequitable Conduct .................................590
IV. Summary of the Court’s Findings.........................................590
V. '705 Patent History.....................................................594
A. The Filing of the Patent.............................................594
B. The Key GE Players Accused of Inequitable Conduct '705 ...............594
VI. Wind Industry Background ..............................................595
A. Grid Code ZVRT Requirements......................................595
B. GE’s Competitors Develop and Patent “ZVRT”.........................595
C. GE Also Achieves Zero Voltage for 100 ms.............................596
D. More Grids Require ZVRT; GE and Its Competitors Confirm They
Have ZVRT Capability, GE Moves to Patent Its Own .................597
E. GE Approves Filing of 705 Patent Application..........................598
F. PTO Initial Rejection and Amendment ................................599
G. The Number of Material Omissions is Significant.......................599
VII. Prior Art..............................................................599
A. Erdman '083 .......................................................599
B. Wobben and Hartge ................................................601
C. Vestas Prior Art....................................................603
D. Severity of the GEIS ZVRT Tests....................................605
E. Prior Public Uses at Colorado Green and Sweetwater...................606
F. GE Develops ZVRT for Even Longer Duration Faults...................607
G. Prior Public Uses at Cowboy Wind Farm..............................608
VIII.The Five Key Players Had Knowledge of the Prior Art But Did Not
Deliberately Deceive the PTO..........................................609
A. James McGinness...................................................609
B. Nick Miller........................................................614
C. Einar Larsen ......................................................616
D. Scott Frame.......................................................617
E. Bob Delmerico.....................................................619
IX. Conclusion.............................................................621
BEFORE THE COURT is Defendant Mitsubishi Heavy Industries’ (“Mitsubishi”) lawsuit alleging that General Electric Company (“GE”) committed inequitable conduct during the '705 patent application. Having reviewed the evidence, the Court finds that the alleged prior art and prior uses are material, but there is not clear and convincing evidence that GE employees deliberately withheld it from the Patent and Trade Office (PTO) in order to obtain a broader patent. In short, GE did not commit inequitable conduct.
I. Background
GE filed this lawsuit against Mitsubishi in February 2010 alleging that Mitsubishi’s 2.4MW wind turbines infringe GE’s '705 Patent and another GE patent, U.S. Patent No. 6,879,055.4. (Dkt. No. 1). Mitsubishi asserted affirmative defenses of inequitable conduct to GE’s infringement claims under both patents. (Dkt. No. 549). After the parties agreed to bifurcate Mitsubishi’s inequitable-conduct claims for a separate bench trial proceeding, GE’s infringement claims and Mitsubishi’s invalidity defenses were tried to a jury in late February and early March 2012. On March 9, the jury returned a verdict that Mitsubishi infringes claim 1 of the '705 Patent, and awarded GE $166,750,000 in lost profits and $3,445,000 in reasonable-royalty damages. (Dkt. No. 536). The jury also found that claim 1 was not anticipated by Nielsen '936 and was not ready for patenting before October 20, 2005. Id.
After the jury verdict, Mitsubishi moved for judgment as a matter of law on invalidity and non-infringement, and that lost profits is not the appropriate measure of damages. (Dkt. No. 588). Mitsubishi also requested a new trial on all three issues, or, in the alternative, remittitur of the damages award. (Dkt. No. 591). GE moved, subject to the outcome of the inequitable-conduct proceedings, for entry of judgment on the jury’s verdict and a permanent injunction. (Dkt. No. 561). The Court denied Mitsubishi’s motions for judgment as a matter of law and a new trial on July 9, 2012. (Dkt. No. 640). Subject to the outcome of the inequitable conduct proceedings, the Court granted GE’s motion for entry of judgment and for permanent injunction on July 9, 2012, and denied Mitsubishi’s request that the injunction be stayed pending appeal. (Dkt. No. 640).
Prior to the inequitable-conduct phase of the proceedings, the Court ordered Mitsubishi to identify, from among the twenty-four individuals at GE accused of withholding twenty-eight separate items of prior art in Mitsubishi’s pleadings and interrogatory responses, the specific prior-art references and the individuals alleged to have withheld those references. (Dkt. No. 653). On August 29, 2012, Mitsubishi identified Erdman '083, Wobben '941 and the Hartge presentation, Nielsen '936 and the Bolik and Saylors presentations, Feddersen '789, the E.ON 2003 grid code, and the installation of GE’s 1.5MW wind turbines at Colorado Green, Sweetwater, Taiban Mesa, and Cowboy Wind as the prior art on which it would base its inequitable conduct claims at trial. (Dkt. No. 669 at 12-13). Mitsubishi identified Dr. James Lyons, James McGinness, Robert Delmerico, Scott Frame, Nicholas Miller, and Einar Larsen as the individuals at GE who it claims withheld one or more pieces of material prior art during the preparation or prosecution of the '705 Patent. Id.
On September 25, 2012, just prior to the inequitable conduct trial,-the Patent Office issued an Action Closing Prosecution (“ACP”) in the inter partes reexamination of certain claims of the '705 Patent that Mitsubishi initiated in 2011. DTX-2785. The ACP rejected claims 1 and 7 as anticipated by Erdman '083 and Wobben '941. In doing so, however, the examiner agreed with GE that zero voltage ride through is fundamentally different from low voltage ride through, and that the E.ON 2003 grid code does not invalidate any claim of the '705 Patent because it merely identifies the ride-through requirements that manufacturers must meet without describing any technical solutions for doing so. DTX-2785 at 36. With respect to Erdman and Wobben, the examiner found those references invalidating because, in the examiner’s view, they teach riding through to “approximately zero volts” by riding through voltage dips down to 5% and 30% of nominal voltage measured at the turbine, respectively. DTX-2785 at 20, 35.
In Right of Appeal Notice (“RAN”) issued on May 7, 2013, the PTO again rejected Claims 1 and 7 of the '705 patent on the basis of prior art. Yet within that same ruling, the PTO reversed its prior rulings, and held that Erdman, Wobben were not material prior art and do not anticipate claims 1 and 7 of the '705 Patent. The PTO also reversed itself on Nielsen, finding it is not material to claim 7. The PTO’s latest ruling about Nielsen regarding claim 1 is forthcoming and has not yet been released. The PTO’s RAN decision came after an ex parte meeting with GE representatives on December 20, 2012. Five GE employees, including Jim McGinness and Einar Larsen, delivered a 37-page PowerPoint presentation to PTO examiner Robert Nasser. The examiner had the benefit of the transcript from the inequitable conduct trial, which included cross-examination of both parties’ experts, though it is not clear to what extent it was used. The parties tried Mitsubishi’s inequitable conduct claims to the Court beginning on October 3, 2012. The bench trial lasted five days, and concluded on October 11, 2012.
II. Policy Underlying The Inequitable Conduct Doctrine
The inequitable conduct doctrine stems from the duty of candor that patent applicants owe to the PTO. See Precision Instrument Mfg. Co. v. Auto. Maintenance Mach. Co., 324 U.S. 806, 816, 65 S.Ct. 993, 89 L.Ed. 1381 (1945). Applicants have an “uncompromising” duty of candor and good faith in dealing with the PTO, which includes the duty of disclosing all known material prior art. Id. at 818, 65 S.Ct. 993; see also 37 C.F.R. § 1.56(a). “Public interest demands that all facts relevant to such matters be submitted formally or informally to the Patent Office, which can then pass upon the sufficiency of the evidence. Only in this way can that agency act to safeguard the public in the first instance against fraudulent patent monopolies.” Precision, 324 U.S. at 817, 65 S.Ct. 993. The single PTO examiner cannot possibly find every fact regarding patentability every industry and thus, must necessarily rely on the good faith and candor of patent applicants. See Kingsland v. Dorsey, 338 U.S. 318, 319, 70 S.Ct. 123, 94 L.Ed. 123 (1949).
Recognizing that compliance with the duty of candor is often contrary to the applicant’s self-interest — i.e., it requires patent applicants to disclose information that may adversely impact entitlement to the claims — the United States Supreme Court created the doctrine of inequitable conduct to police that duty and ensure the patent system’s integrity. See Precision, 324 U.S. at 816, 65 S.Ct. 993. The doctrine is designed to prevent applicants from knowingly misleading the patent office on patentability matters and ensure that examiners have full access to favorable and unfavorable information, despite the ex parte nature of the proceedings. The penalties for breaching the duty of candor are severe. Where inequitable conduct has occurred with respect to any claim, the entire patent becomes unenforceable. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1288 (Fed.Cir.2011) (en banc).
This Court understands the extreme consequences of finding inequitable conduct, and why the Federal Circuit so strongly disfavors it. Stripping inventors of their patent rights amounts to the “nuclear option”, and should only be exercised with clear and convincing evidence. See Therasense, 649 F.3d at 1288. Furthermore, while inventors have a duty of candor when applying for a patent, it is possible to innocently omit relevant prior art, either by accident or because of a good faith belief that the art in question was not material. The Federal Circuit has sought to limit the use of inequitable conduct in courts, viewing it as a scourge on the patent bar. As a policy matter, the Federal Circuit’s limitations make sense. Inventors should not have their patent rights stripped away merely because they fail to include every possible piece of prior art, as such a policy would encourage competitors to infringe on patents and then attempt to invalidate them via inequitable conduct. Instead, there must be clear and convincing evidence that the inventors knew the prior art was material and deliberately failed to disclose it, violating the duty of candor. A limited inequitable conduct doctrine should prevent the intentional deception of the Patent Office, not merely punish harmless oversights or legitimate disagreements over the relevance of prior art.
If a court finds the alleged prior art is material, it then must decide whether the decision to withhold the art was a deliberate event to deceive the PTO. “[I]n order to show that the patentee acted with the specific intent to deceive the PTO, a defendant must prove ‘that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.’” 1st Media, LLC v. Elec. Arts, Inc., 694 F.3d 1367, 1372 (Fed.Cir. 2012) (quoting Therasense, 649 F.3d at 1290). “Knowledge of the reference and knowledge of materiality are insufficient after Therasense to show an intent to deceive.” Id. at 1374. Furthermore, “proving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” Therasense, 649 F.3d at 1290. “A finding that the misrepresentation or omission amounts to gross negligence or negligence under a ‘should have known’ standard does not satisfy this intent requirement.” 1st Media, 694 F.3d at 1374. “To meet the clear and convincing standard, the specific intent to deceive must be ‘the single most reasonable inference able to be drawn from the evidence.’ ” Therasense, 649 F.3d at 1290 (quoting Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed.Cir.2008)). “[W]hen there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found.” Therasense, 649 F.3d at 1290-91. “A court can no longer infer intent to deceive from non-disclosure of a reference solely because that reference was known and material. Moreover, a patentee need not offer any good faith explanation for his conduct unless and until an accused infringer has met his burden to prove an intent to deceive by clear and convincing evidence.” 1st Media, 694 F.3d at 1372-73. The Court understands the intent of the Federal Circuit in designing so many roadblocks to a finding of inequitable conduct: only “slam dunk” cases should be considered. Nevertheless, the Federal Circuit cannot have intended to entirely eliminate the duty of candor.
This is particularly thorny, because “direct proof’ of deception would most likely come in two forms: First, a whistleblower who testifies that the inventors acted in bad faith. This, while possible, would certainly require extraordinary circumstances. Second, a “smoking gun” document that amounts to a transcription of a conspiracy to deceive the PTO. This too is particularly unlikely, not only because such written confessionals are rare, but more importantly because those documents would be unlikely to emerge in an inequitable conduct trial due to attorney-client privilege. Since the attorney filing the patent would be included in most, or all relevant discussions about the prior art, those documents would not be discoverable by the opposing party. As a result, inequitable conduct is a defense that has been commonly plead, but rarely proven. In response to this “plague” of pleading inequitable conduct “on the slenderest grounds” the Federal Circuit in Therasense “tightened] the standards for finding intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.” Therasense, 649 F.3d at 1289-90 (Fed.Cir.2011).
After the production of over ten million pages of documents, over thirty depositions of GE employees and attorneys, in-camera review of GE’s entire privilege log, a jury trial on infringement and validity, and a bench trial, no single “smoking gun” document emerged. As a result, the Court is obliged to rule in favor of GE, despite the evidence of materiality of the prior art and GE’s possible awareness of it.
III. Standard for Finding Inequitable Conduct
In order to prevail on an inequitable conduct claim, a defendant must establish both the materiality of the withheld reference and the applicant’s intent to deceive the PTO. Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed. Cir.2011) (en banc). In Therasense, the Federal Circuit rejected the “sliding scale” approach to proving inequitable conduct, “where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa.” Id. Instead, “[i]ntent and materiality are separate requirements.” Id. Moreover, a district court may not infer intent solely from materiality, and thus “[pjroving that the applicant knew of a reference, should have known of its materiality, and decided not to submit it to the PTO does not prove specific intent to deceive.” Id.
With respect to materiality, the standard is “but-for” materiality unless there is affirmative egregious misconduct (which is not alleged here). Id. at 1291-92. A prior art reference “is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.” Id. at 1291. In the inequitable conduct context, but-for materiality must be shown by a preponderance of the evidence, “giv[ing] claims their broadest reasonable construction.” Id. at 1291-92; see also Aventis Pharma S.A. v. Hospira, Inc., 675 F.3d 1324, 1334 (Fed.Cir.2012). “Often the patentability of a claim will be congruent with the validity determination — if a claim is properly invalidated in district court based on the deliberately withheld reference, then that reference is necessarily material because a finding of invalidity in a district court requires clear and convincing evidence, a higher evidentiary burden than that used in prosecution at the PTO.” Therasense, 649 F.3d at 1292.
To satisfy the intent requirement, “the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.” Id. at 1290; 1st Media, 694 F.3d at 1374-75 (Fed.Cir.2012) (“Knowledge of the reference and knowledge of materiality alone are insufficient after Therasense to show an intent to deceive .... To sustain a charge of inequitable conduct, ‘clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.’ ”). Thus, inequitable conduct requires clear and convincing evidence of a specific intent to deceive the PTO. Therasense, 649 F.3d at 1290.
IV. Summary of the Court’s Findings
In short, the Court finds that GE did not commit inequitable conduct when filing the 705 patent. This finding is made with some reluctance, as the Court finds the prior art is material — a fact which GE may have considered — but there is insufficient evidence to conclusively prove that GE deliberately deceived the PTO. Such a strained holding is the result of this Court’s obligation to enforce the Federal Circuit’s nearly insurmountable standards for deliberateness outlined in Therasense and 1st Media. While those rulings will certainly reduce frivolous charges of inequitable conduct, in the process, they have severely limited the ability of district court judges to make inferences based on the evidence.
Currently, a patent applicant can know the art is material, not present it to the PTO, and still avoid a charge of inequitable conduct. See 1st Media, 694 F.3d at 1376-77 (“As Therasense made clear, a defendant must prove that an applicant (1) ‘knew of the reference,’ (2) ‘knew it was material,’ and (3) ‘made a deliberate decision to withhold it.’ ”) This third requirement of “deliberateness” creates a hurdle is unlikely to be jumped in all but the rarest cases. Here, GE submitted just one piece of prior art, omitting entire state of the wind industry at the time. As a result, the claims of the '705 patent are expansive: they effectively mean that any wind turbine manufacturer (using a software solution) who complies with the zero voltage ride through requirements of U.S. grid codes will be in violation of the '705. By omitting the entire state of the U.S. wind industry, GE led the Patent Office to believe that its invention was the first to successfully ride through zero voltage events; yet there is insufficient proof this was a deliberate effort to deceive.
This case was also plagued by a lack of documentation due to the attorney-privilege. This is particularly unfortunate because it obscured the Court’s ability to fully judge the record. Additionally, there is policy concern: by ensuring that a lawyer is always involved in the key discussions during the application process, which is normally the rule, sophisticated patent applicants can assert privilege over a wide range of documents. Because courts must respect privilege, any “smoking gun” documents, if they exist, are unlikely to ever emerge. Just such a scenario unfolded here, as the Court was unable to see the full scope of GE’s thought process during the application process. Nevertheless, the Court’s hands are tied by the Federal Circuit’s post-Therasense precedent, and without more conclusive documentation of a deliberate conspiracy, there can be no finding of inequitable conduct.
First, the Court finds that the alleged prior art was indeed “but for” material and, had the PTO been alerted, it would have prevented the issuance of claims 1 and 7 the '705 patent. Second, Mitsubishi did not present clear and convincing evidence that key GE players who filed the '705 Patent deliberately deceived the PTO. While the record shows that the GE players analyzed and considered the materiality of the prior art patented by their main competitors in the wind industry, there is no proof that GE considered it material to the '705 patent and then withheld it. That said, the key GE players did not merely fail to disclose one patent, or even two; instead, they failed to disclose all of the relevant wind turbines dominating the market at the time. Additionally, the evidentiary record shows that the lone patent disclosed by GE — Janssen '188, a GE patent from January 2003 — was far more rudimentary than the other, more technologically-advanced competitor patents.
This Court’s decision to contradict the most recent PTO ruling on materiality may raise eyebrows. If the Court is supposed to find materiality based on what the PTO would have done, how can it know better than the PTO? The Federal Circuit in Therasense was adamant that, in determining materiality for purposes of inequitable conduct, the district court must determine “whether the PTO would have allowed the claim if it had been aware of the undisclosed reference.” 649 F.3d at 1291. And as mentioned, on reexamination, the PTO has found that Erdman and Wobeen do not require the rejection of claims 1 and 7 of the '705 patent, nor does Nielsen require the rejection of Claim 1. See Right of Appeal Notice. Yet at most, this ruling is persuasive and not conclusive or definitive. Previously, the PTO had found that Erdman, Wobben, and Nielsen each independently required rejection of Claims 1 and 7. Thus, if the Court had ruled at any time before the recent Right of Appeal Notice in May, it would have been persuaded by a PTO to find the prior art material. Additionally, this most recent RAN is still eligible for further appeals, meaning the PTO may again change course. Lastly, the PTO has still maintained the position that claims 1 and 7 are rejected, albeit on the basis of prior art not included in this trial (Wall).
Thus, the Court is supposed to be persuaded by current, still ongoing PTO rulings on the prior art in this case, while ignoring the fact that key claims from the infringement trial’s $170 million judgment, are still currently rejected. Under the circumstances, the Court finds this case in a strained posture. The parallel proceedings before the PTO have not yet been completed, and have taken a particularly different path from this Court as it renders its own conclusion. While the PTO’s current judgments are persuasive, this Court believes the prior rulings at the PTO were a more accurate view of the prior art, and the disagreements within the PTO itself reflect just how delicate these matters are. The reversal at the PTO also shows that the materiality of the prior art could have eluded the key GE players. Again, while the Court disagrees with the findings of the current RAN, they are persuasive to the degree that they show persons skilled in the art could have taken the view that Erdman, Wobben and Nielsen were not material.
Ultimately, the Court’s disagreement with the PTO’s current stance exposes a fundamental disconnect in the parallel proceedings. While the PTO examiner Robert Nasser had the trial record in front of him, he did not witness it with the same detail as the Court. That is, this Court must not only view all of the evidence before it, it must also gauge the persuasiveness of the PTO’s ruling in that light. Furthermore, Mitsubishi raised the issue of prior uses before this Court, namely the GEIS converters, which it could not raise before the PTO because it was not prior art. This adds yet another layer of nuance to the Court’s finding of materiality. While the Court respects examiner Nasser’s decision, it does not explain why impedances on the grid side of the transformer, which are typically at least 5-10%, would not allow the alleged prior art to achieve a less robust ZVRT, and therefore be material. Even after Therasense, the test for materiality is broad. In evaluating whether an undisclosed reference is but-for material, courts are instructed to “give claims their broadest reasonable construction.” Therasense, 649 F.3d at 1292. This is in keeping with the broad sweep of the duty of candor and the basic precept that “[cjlose cases should be resolved by disclosure, not unilaterally by [the] applicant.” Critikon, Inc. v. Becton Dickinson Vascular Access, Inc., 120 F.3d 1253, 1257 (Fed.Cir.1997) (quoting LaBounty Mfg., Inc. v. U.S. Int’l Trade Comm’n, 958 F.2d 1066, 1076 (Fed.Cir.1992)). The patent applicant cannot independently decide that the patented technology does not work: “In patent prosecution the examiner is entitled to reject application claims as anticipated by a prior art patent without conducting an inquiry into whether or not that patent is enabled....” In re Antor Media Corp., 689 F.3d 1282, 1287-88 (Fed.Cir.2012) (internal quotations and citations omitted). See also Novo Nordisk Pharmaceuticals, Inc. v. Bio-Technology General Corp., 424 F.3d 1347 (Fed.Cir.2005); Manual of Patent Examining Procedure § 2121 (8th ed. 2001, rev. 2006). When applying for a patent, the individual may not omit prior art simply because he suspects it does not work. Lastly, proof of “but-for” materiality in the inequitable conduct context requires only a preponderance of the evidence. Therasense, 649 F.3d at 1291-92. It need only be more likely than not that the PTO would have reached a different result. Here, at least seven prior art references that were not disclosed in the 705 patent application.
The lone disclosed reference, Janssen '188, describes wind turbine ride-through at voltage levels of 15%, and never claims the ability to remain connected through any zero voltage or “three phase fault” events. In other words, it is pure “low-voltage ride-through” system; when there is a zero voltage event anywhere, including the point of interconnection, the turbine will disconnect. This is contrasted with the more updated competitor patents and prior art which can remain connected during zero-voltage events further down the grid. These systems require 5% voltage to remain connected. This allows them to ride through zero voltage events at the point of interconnection, because residual voltage in the system and turbine, measured at the padmount transformer, is usually between 5-10% during the tenths of a millisecond that the voltage drops to zero. By omitting the advances made after Janssen, GE gave the Patent Office the impression that they were the first in the industry to achieve zero voltage ride through. This likely allowed GE to gain a broader patent.
Privilege issues also plagued the testimony from GE employees. This was particularly true with the GE attorney Jim McGinness, who testified that he acted in good faith and insisted that to the extent that he knew about the relevance of prior art, he would disclose it. Yet he also enjoyed the benefit of the attorney-client privilege which allowed him to avoid any documentary reference to what GE knew about prior art in the wind industry and its potential relevance to the '705 patent. While the Court ruled against finding a waiver of privilege (Dkt. No. 760), it also stated that McGinness’ strategy of hiding behind privilege while asserting his good faith would be viewed critically. Nonetheless, the Court’s latitude is limited by the Federal Circuit, which has held that assertion of attorney-client and/or work-product privilege and the withholding of the advice of counsel shall no longer entail an adverse inference as to the nature of the advice. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1345 (Fed.Cir.2004). By not allowing the Court to draw a negative inference from GE’s extensive use of privilege, the Federal Circuit essentially forces the Court to make a positive inference. This produces a tremendous structural advantage for the party accused of inequitable conduct, while encouraging the abuse of privilege. Additionally, GE’s assertion of privilege sometimes left gaping holes in some witnesses’ explanations of the evidentiary record.
These key problems worked together to limit the Court’s analysis. GE’s effective use of privilege, allowed by the Federal Circuit’s precedent, combined with the Federal Circuit’s high standard of evidence for deliberateness post-Therasense, led to insufficient evidence of an effort to deliberately deceive the PTO. Because of the privilege problems, a full viewing of the 705’s history was outside of this Court’s view, making a finding of deliberateness impossible. These aforementioned structural and policy issues will last beyond this case. From the evidence that is before this Court, there is evidence that GE was aware of the competitors’ prior art, and its exclusion during the application process likely allowed GE to obtain broad patent claims for the '705. Yet there is insufficient documentary evidence that GE considered it material to the '705 patent. Thus, because Mitsubishi’s version of the events it is not the only reasonable explanation by clear and convincing evidence, this Court must rule for GE. See Therasense, 649 F.3d at 1290-91 (“Hence, when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found.”). Furthermore, the Court must regrettably enter judgment on a series of patent claims that are likely to be rejected, because there are no other options available. As a result, the Court finds for General Electric.
V. '705 Patent History
A. The Filing of the Patent
The initial '705 application filed in 2006 actually sought to patent all methods and apparatus for low voltage ride through, something GE now concedes was very widely anticipated by prior art in 2006. Any art that covered either low voltage ride through (LVRT) or zero voltage ride through (ZVRT) was relevant to that 2006 application. Yet the GE employees submitted only a single GE patent reference from 2003 relating to LVRT.
The U.S. Patent & Trademark Office (PTO) examiner assigned to the 705 application independently discovered another of GE’s own prior LVRT patents and on that basis, rejected the broad 705 LVRT claims. But he did not independently focus on any ZVRT prior art and the GE employees did not identify any. In February 2009, he suggested that he would allow those claims if they had a ZVRT limitation, and GE amended its application in June 2009 to make sweeping claims for all methods of achieving zero voltage ride through. Under GE’s theory, the 705 patent application sought to patent ZVRT for any duration and for all techniques for achieving ZVRT through the controls within the turbine. Less than three months after the issuance of the '705 patent, GE asserted it against Mitsubishi. In the initial trial in this Court, GE asserted that its patent covered methods for achieving ZVRT of any duration. GE then claimed that it practiced the invention because its technology could handle zero voltage at the point of interconnection for 200 ms. GE claimed that Mitsubishi infringed because it used a different technique that permitted 150 ms of ZVRT. On this basis, GE won a jury verdict of $170 million.
GE claims that the prior art is distinguishable because it does not provide ride through for a zero volt fault at the base of the turbine. Yet the 705 patent claims contain no such limitation. GE never identified zero volts at the base of the turbine as a limitation during the initial trial, nor did it show that Mitsubishi’s allegedly infringing technology could ride through a zero volt event at the turbine base. Also, it is clear that the relevant pieces of prior art were encountered by the key GE players. As a result, the Court can infer the possibility of inequitable conduct, but without clear and convincing evidence as defined by the Federal Circuit’s post-Therasense precedent, the Court cannot find it.
B. The Key GE Players Accused of Inequitable Conduct '705
The doctrine of inequitable conduct is based on the applicant’s duty of candor and good faith in dealing with the PTO, including the duty to disclose material information. 37 C.F.R. § 1.56. This duty is owed by (1) each named inventor, (2) each attorney or agent that prepares or prosecutes the application, and (3) every other person who is substantively involved in the preparation or prosecution of the application. Id. The Federal Circuit defines “substantive involvement” broadly to mean “that the involvement relates to the content of the application or decisions related thereto, and that the involvement is not wholly administrative or secretarial in nature.” Avid Identification Sys., Inc. v. Crystal Import Corp., 603 F.3d 967, 974 (Fed.Cir.2010). The five key GE players — James McGinness, Einar Larsen, Nick Miller, Scott Frame and Bob Delmerico — all meet the Federal Circuit’s test for substantive involvement. McGinness, the chief IP Counsel for GE Wind, played the central role in the preparation and prosecution of the 705 patent. McGinness was responsible as the lawyer, Larsen as a co-inventor, and Miller, Frame and Delmerico, by their own admissions and the testimony of others, had substantive involvement.
VI. Wind Industry Background
As the Court has noted, the key GE players did not simply omit a number of highly relevant patents from the 705 application, they omitted the state of the entire wind turbine industry. Three to four years before they filed their 705 patent application, wind turbine manufacturers around the world had developed the capacity to ride through zero voltage faults. GE’s competitors did not use the shorthand “ZVRT” to describe their capabilities — that phrase was created by GE as a marketing tool. Vol. 2A Tr. 101:19-22; see also DTX-954 (discussing market strategy for LVRT III and referring to it as “zero voltage ride through” and “0% for 600 ms, and possibly up to 1 second in the future”). In fact, as late as February 2005, GE was still referring to its ZVRT option as “LVRT-3.” See, e.g., DTX-480 at GENDTX01951184 (“The LVRT-3 option for the 1.5MW turbine delivers ride-thru capability down to 0% voltage at the point of interconnection for 1 second.”). The novelty of the term “ZVRT,” if not the technology, made it more difficult for the PTO examiner to do computer word searches for prior art.
A. Grid Code ZVRT Requirements
The grid codes are important because they tracked precisely the progress of the industry in achieving it, and showed the standards that were commonplace in the industry. For example, E.ON Netz, a large transmission system operator (TSO) in Germany, formulated its grid interconnection standards by holding meetings directly with the manufacturers, to confirm their capabilities. (Vol. IB Tr. 20:18-22:4, 28:16-30:3). In April 2003, E.ON decided to move from a standard requiring ride through of 15% voltage to one requiring ride through of zero voltage faults for 150 ms. (Vol. IB Tr. 24:17-25:7). On August 1, 2003, E.ON issued its 2003 grid code, which included requirements for low voltage ride through for 625 ms and zero voltage ride through for 150ms. See Vol. IB Tr. 27:24-28:4; DTX-1166. Other regions developed similar standards. In Australia, the National Electricity Code Administrator also required wind turbines to be capable of riding through zero volt faults at the point of interconnection (“POi”) for i75 milliseconds. See Vol. 5A Tr. 31:4-20. By November 2002, NECA sought to apply the ZVRT requirement to all newly proposed wind farm projects, such as Wattle Point in South Australia. See Vol. 5A Tr. 32:3-34:16; DTX-2280. Although GE lost out on the project, Miller represented to the potential customer in February 2003 that the “GE 1.5 megawatt machine equipped to satisfy the Australia NEC code requiring operation through extremely low (zero voltages) will continue operation down to zero voltage without tripping from the grid.” Vol. 5A Tr. 33:6-13; DTX-2814.
B. GE’s Competitors Develop and Patent “ZVRT”
In line with the grid codes adopted in 2003, GE’s European competitors were the first manufacturers to develop technical solutions to capable of riding through zero-voltage events, and to seek patents on the new technology. First came Vestas, a Danish company, the largest wind turbine manufacturer in the world. Vestas developed several different techniques in 2002 and 2003. (Vol. 2A Tr. 17:21-18:6, 23:21-25:5). And in December 2002, eighty Vestas modified V80 turbines went into operation at Horn’s Reef, the first large-scale off-shore wind farm in the world. (DTX-1207). These turbines had controls-based capability to ride through zero voltage events at a distant location. (Vol. 5A Tr. 57:12-17). In June 2003 (Spain) and October 2003 (Denmark), Dr. Sigrid Bolik from Vestas presented papers on the achievement. (Vol. 5A Tr. 11:6-20, 15:7-16:3). Both papers explained that, with the technology in modified V80 turbines at Horns Reef, the “turbine will always be connected to the grid, even at 0 voltage for 200 ms.” DTX-1207; DTX-1208; Vol. 2A Tr. 18:14-19:5. Almost simultaneously with the presentation in Denmark, Vestas engineer Steven Saylors similarly presented this capability in the United States at a meeting held by the independent transmission system operator of New England (“ISO New England”) on October 20, 2003. Vol. 5A Tr. 9:13-10:8. On a different track, Vestas sought to patent more advanced techniques. In February 2003, Vestas filed international patent application Nielsen '936. (DTX-1212).
Enercon, the leading German wind turbine manufacturer, also confirmed in 2003 that it was able to comply with the E.ON 2003 Standard. (Vol. IB Tr. 28:16-29:24) (App. 31-32). On September 23, 2003, Enercon filed the European patent application that led to Wobben '941. (DTX-1201). One month later, on October 21, 2003, Stefan Hartge of Enercon presented his paper at the Denmark conference and disclosed the substance of Wobben '941. (DTX-1202). Miller sat on the same panel as Hartge when Hartge made the presentation. Id.; (Vol. 5A Tr. 11:6-20). Thus, two leading European manufacturers had announced that they could achieve control-based zero voltage ride through during 2003.
C. GE Also Achieves Zero Voltage for 100 ms
It was at this time that GE began to demonstrate that it, too, could achieve zero voltage ride through. On June 20, 2003, just days after the conference in Spain, a team led by Scott Frame conducted successful pre-production tests of the new GEIS converter for zero volt faults as measured at the base of the turbine for 100ms. (DTX-1214). The internal GE test report stated that the converter “passed all of these tests operating flawlessly during and after the faults.” See Id.; Vol. 5A Tr. 79:9-20. Then, just a month later, GE successfully field-tested this GEIS converter on an actual wind turbine in Tehachapi, California. See Vol. 5A Tr. 81:17-82:10; DTX-1213; [DTX-1572]; DTX-2720. 5 After the successful ZVRT field tests, the GEIS converters immediately went into production. See Vol. 5A Tr. 82:11-18; DTX-1213; DTX-2720.
By the end of the year 2003, GE had commissioned wind turbines using the very same model of GEIS converters at wind farms at Colorado Green and Sweetwater I. See Vol. 5A Tr. 82:19-84:17; DTX-1573. The turbines were set to ride through grid faults that went down to 5 percent of rated voltage when measured within the turbine — that is, on the generator side of the pad-mount transformer impedance. This meant that the Colorado Green and Sweet-water turbines were still riding through zero voltage events at the point of interconnection. When voltage was zero at the point of interconnection, the voltage at the turbine would remain 10% to 15% for at least 100 ms or more, and this was well over the 5% setting below which the turbines were set to trip offline. (Vol. 4 Tr. 17:24-20:25). The PTO’s recent RAN fails to adequately grapple with these facts.
D. More Grids Require ZVRT; GE and Its Competitors Confirm They Have ZVRT Capability, GE Moves to Patent Its Own
In early 2004, the United Kingdom’s grid regulator and its three grid operators met with wind turbine manufacturers regarding proposed changes to the grid code, including a requirement for ride through at zero volts for 140 ms at the POL In May 2004, National Grid, one of the UK grid operators who interviewed manufacturers released a report summarizing those meetings, which confirmed that at least 8 of 10 major turbine manufacturers had the technical capability and commercial availability to achieve this goal. DTX-1495 at 7. This included Enercon and Vestas, among others. Id. at 5. The UK Grid Code ultimately made this 140 ms ZVRT standard mandatory for all utility-scale farms, effective on June 1, 2005. See Vol. 5A Tr. 28:18-29:5; DTX-2802. In May 2004, GE obtained a cross-lieense to Enercon’s ZVRT technology. (Vol. 3A Tr. 90:3-90:24). With the'help of Mr. McGinness, GE settled a lawsuit against Enercon and obtained a broad cross-license over “Electrical Control Patents” relating to “grid transients of voltage” for which applications had been filed prior to the agreement or within 5 years of its anniversary. See Vol. 3A Tr. 90:3-91:20; PTX-490.
Beginning in September 2004, Frame was appointed to manage a GE’s ZVRT program team, which included Larsen, Miller and Delmerico. The team, whose purpose was to advance GE’s ZVRT capability beyond the 100 ms achievement, had weekly meetings on their progress and was advised by McGinness. See Vol. 5A Tr. 21:21-22:25, 88:20-89:11. In 2004, ZVRT requirements began to appear in the U.S. The Western Electricity Coordinating Council (WECC), which regulates grid codes in the western United States, had proposed a new standard requiring ZVRT for turbines connected to the grid in its region. See DTX-2215; Vol. 5A Tr. 29:10-30:13. The standard would have required ride through of a “normal three phase fault” — which was translated by industry participants to mean ZVRT for roughly 3 to 8 cycles, which is roughly 50 to 133ms. (DTX-2215). In October 2004 — the same month that WECC proposed its standard — GE demonstrated to its largest customer, Florida Power & Light, that GE wind turbines using the GEIS converter were capable of ZVRT for 200 ms. See DTX-2215; Vol. 5A Tr. 29:14 — 30:21.
In an October 6, 2004 email from Miller to Frame, on which both Larsen and Delmerico were copied, Miller noted that a new customer’s “ZVRT requirement ... is limited to 0.1 sec [100 ms.]. The agony is Hawaii [600 ms] which aint an order yet! The Great Britain GC (50hz for 140 ms) and AESO (Alberta is 200 ms.) It’s my opinion that most 60 hz. [North American] apps will be met with 200 ms.” (DTX-509) (App. 1552). Less than a month later, in November 2004, Clipper Wind, a U.S. wind turbine manufacturer created by former GE Wind employees, filed the Erdman '083 patent application. (DTX-1199). Erdman '083 was published on June 9, 2005. (Id.).
E. GE Approves Filing of '705 Patent Application
On December 20, 2005, eight days after FERC Order 661 A, the GE Wind Patent Review Board, which included McGinness, began what became the '705 patent application. See DTX-2691; Vol. 3A Tr. 40:24 — 43:6; Vol. 3B Tr. 47:11 — 49:11. About six months later, four of the five key GE players — Miller, Frame, Delmerico and McGinness — formed the Grid Interconnect IP team “to review existing patents, find gaps in IP coverage and develop a strategy in developing new IP concepts.” (DTX-1904). Informed by the team’s analysis, McGinness reviewed the application and sent prior art to outside counsel to be cited in the 705 patent application. (Vol. 3A Tr. 65:2-66:15). While Frame organized meetings between the inventors and counsel, Miller reviewed drafts of the application. (Vol. 5A Tr. 23:1-24:19, 69:6-23). On October 20, 2006, GE filed the application for the 705 patent. (DTX-1505). Its independent claims sought to patent virtually all methods and apparatus that could provide controls-based low voltage ride through. {Id. at 20, 75). Although low voltage ride through had been required in Europe, the only prior art reference disclosed by GE relating to LVRT or ZVRT in the 2006 application was Janssen '188, filed in January 2003, almost four years earlier. See Vol. 5B Tr. 40:11-41:2; DTX-1505. GE did not include a single reference to any of the patents published by its competitors. Id. Nor did the application explain that since July 2003, GE had installed an LVRT wind farm at Taiban Mesa or that since December 2003, GE had installed LVRT at two operating wind farms — Colorado Green and Sweetwater. In the original application, ZVRT appeared only in a dependent claim. (DTX-1505).
F. PTO Initial Rejection and Amendment
On February 17, 2009, the PTO examiner initially rejected original Claims 1 and 8 (which issued as Claim 7) based on the examiner’s independent discovery of Weng '248, another LVRT patent application filed by GE. See Vol. 5B Tr. 41:10-42:14 (App. 342-43); DTX-1505. The decision stated “[i]t would have been obvious to one having ordinary skill in the art at the time the invention was made to design the system as disclosed by Weng et al.... ” (DTX-1505). The examiner, who had no ZVRT prior art before him, indicated that Claims 2 and 9, inter alia, which required ride through at zero volts, “would be allowable if rewritten in independent form.” Id. On June 17, 2009, GE amended the claims to include the ZVRT limitation. Id. GE added a limitation to Claims 1 and 7 so that they only covered ride through of a voltage disturbance down to “approximately zero volts for the undetermined period of time, thereby facilitating zero voltage ride through (ZVRT).” Id. But the key GE players did not disclose any prior art references relating to “ZVRT,” including Erdman '083, Wobben '941, and Nielsen '936. GE also did not disclose any of its own prior uses. Thus, the '705 patent issued on December 8, 2009 without the PTO examiner having before him any of the prior art relating to the development of ZVRT after Janssen '188.
G. The Number of Material Omissions is Significant
The Court finds that the number of omissions is significant. There is no “magic number” of omitted pieces of prior art that constitute inequitable conduct, however GE’s decision to withhold the entire state of the wind turbine industry from the Patent Office most certainly creates a problem. In Aventis, the district court found that the omission of two separate, highly material prior art references was significant in that it revealed a course of conduct to deceive the patent office. Aventis Pharma S.A. v. Hospira, Inc., 743 F.Supp.2d 305, 354 (D.Del.2010). Other material omission cases have found that the existence of more than one material omission supports an inference that the omissions were intentional. See In re Beaubouef, 966 F.2d 174, 178 (5th Cir.1992) (affirming bankruptcy court’s finding of intent to deceive based on “the existence of more than one falsehood, together with [the debtor’s] failure to take advantage of the opportunity to clear up all inconsistencies and omissions when he filed his amended schedules”).
Here, there were far more material omissions than in Aventis. The key GE players failed to disclose not two or three material references but far more: the patent applications by Erdman, Wobben and Nielsen; as well as the presentations from Bolik, Hartge and Saylors, and the public uses of both GEIS converters achieving ZVRT (Colorado Green and Sweetwater) and the PLL state machine achieving LVRT (Cowboy Wind). The omitted references reveal that the technology for connecting wind turbines to the electrical grid had significantly progressed from the Janssen '188 application filed in January 2003 and that numerous industry players had already invented ZVRT technology long before GE filed the '705 patent application. By the end of 2003, GE had already demonstrated the zero voltage ride through capability of its GEIS converter at Salem, field tested the converter at Tehachapi, and installed it at two locations. By October 2005 — one year before the filing of the 705 patent application — -almost every manufacturer had LVRT capability and at least three GE competitors had controls-based ZVRT capability. Mitsubishi demonstrated at trial that GE monitored the prior art possessed by its rivals — and distributed that information within the company. (Vol. 3A Tr. 55:13-63:21; DTX-1492 (Dkt. No. 316-2)). Nonetheless, Mitsubishi failed to conclusively prove that GE considered the prior art material to the '705 application and deliberately withheld it in an effort to deceive the PTO.
VII. Prior Art
A. Erdman '083
Clipper WindPower — a U.S. wind turbine manufacturer — filed the Erdman patent application in November 2004 and published it on June 9, 2005. See DTX-1199. The PTO’s recent Right of Appeal Notice no longer rejects claims 1 and 7 in light of Erdman. It states that “[a]s such, it seems to the examiner that Erdman does not teach staying connected to the grid for voltages that, at a minimum, fall below 35 volts, and therefore does not stay connected for voltages falling to approximately zero volts. As such, the rejection is being withdrawn.” Right of Appeal Notice at 24. Nonetheless, the Court disagrees and finds Erdman patent is material prior art. The PTO’s current finding relies on the fact that on the turbine side of the transformer, voltage is approximately 35 volts; as such, it is not the 5% needed for synchronization to stay connected to the grid. Yet the PTO does not explain its sudden reversal as to the ability of Erdman to ride through zero-voltage events at a distant location because of residual impedances of 5-10% as measured at the turbine.
Throughout the trial, GE argued that the Erdman patent is not material because cannot teach ride-through at the high-side of the pad-mount transformer. DTX-1199 at [0016], Yet even on its face, Erdman addresses faults down to zero:
[E]ven if voltage is zero at a fault point at a distant location on the utility collection, distribution, sub-transmission, or transmission system, impedance between the generator and the fault will still create a voltage waveform as long as current is supplied.
DTX-1199 at [0035]. Furthermore, Erdman explains, “impedances between the wind turbine converter system and the sub-transmission system (pad mount transformers, substation transformers, length of conductors, etc.)” enable the generator to remain connected “even if voltage at the transmission or collection system fault is zero.” Id. at [0047]. In other words, the electronic impedances from the system do not disappear during that fraction of a millisecond. The Court was persuaded by Dr. Harley’s testimony that impedances from the transformers would result in higher voltage at the turbine than at the fault. Vol. 2A Tr. 9:12-22. Thus, the zero voltage event at a distant point on the system, will still allow a measurement of 5% voltage at the turbine, allowing the turbine to stay connected.
In fact, GE’s own witnesses, Einar Larsen and James Lyons, agreed at trial with the basic principle that, due to impedances, there will be voltage at an operating turbine during a zero voltage event on the grid. See, e.g., Vol. 4 Tr. 20:11-19, 30:10-21 (Larsen); Vol. 6A Tr. 24:2-15 (Lyons). Additionally, a diagram from Larsen’s own “Converter Control Concepts to meet Severe Grid Requirements with GE 1.5 MW Wind Turbine Generators,” prepared on January 14, 2005, contemplates that impedance — from at least two wind farm and turbine transformers — will result in there being as much as 10-15% residual voltage at the turbine during a zero-voltage fault. The records before the Court show that Dr. Lyons communicated this same position to the key GE players in 2003. See DTX-1568 (July 2003 email from James Lyons indicating that during a zero voltage event at the point of coupling, 10-15% volts “should be reflected back to the turbine”); Vol. 6A Tr. 24:2-15.
GE’s attempt to avoid Erdman '083 focuses on only a single embodiment of the 705 patent, and is inconsistent with industry practice and GE’s own documents. See, e.g., Vol. 4 Tr. 54:6-25. First, GE’s preferred construction is not the broadest reasonable construction of the claims, as mandated by Therasense. Yet Larsen sought to testify that the 705 patent addresses faults at a single location, point 242 on Fig. 2 of the patent, and “nothing else matters.” Vol. 4 Tr. 54:18-21; see also Vol. 6B Tr. 17:2-12 (Grady). This theory only invokes a single embodiment of the 705 patent, see DTX-1509 col. 4, 1. 34, while ignoring the relevant claim language. In fact, there is nothing in the claims of the '705 Patent that refers to this location. The claims refer instead to the voltage of the “electric power system,” i.e., the grid. See id. col. 11,1. 48-54. It is the language of the claims, not the language of an illustrative embodiment, that controls the scope of the claims. See Falana v. Kent State Univ., 669 F.3d 1349, 1355 (Fed.Cir.2012) (“[T]his court has ‘cautioned against limiting the claimed invention to preferred embodiments or specific examples in the specification’ ... ’[W]e are constrained to follow the language of the claims, rather than that of the written description.’”) (internal citations omitted). Under the “broadest reasonable construction,” Therasense, 649 F.3d at 1292, a fault on the “electric power system” would encompass a fault at a more distant location, such as the point of interconnection with the grid, or the grid itself. In light of the broad language of its claims, GE cannot narrow its patent.
Furthermore, GE’s interpretation contradicts industry practice or GE’s own documents. The emerging grid codes, which GE used in developing the '705 Patent, describe riding through disturbances on the grid — at the point of interconnection or the grid side of the plant’s step up transformer — not at the pad-mount transformer. See, e.g., DTX-175 (FERC Order 661); DTX-1967 (Great Britain’s grid codes will soon require “0% at POI for 140 ms”); DTX-1972 (June 2003 email from N. Miller indicating that Western Power Australia has proposed “zero voltage at POI for 1 second”); DTX-2215 (WECC LVRT standard will require zero volts at the point of interconnection for up to 8 cycles). The record also shows the GE’s customers shared this understanding. See DTX-480 (Hydro Quebec contract would “deliver ride-thru capability down to 0% voltage at the point of interconnection for 1 second”); DTX-1995 (Romano is prepared to tell Hawaiian customers that GE can do 0 voltage for up to 1 second at the “point of common connection”); DTX-2121 (Sweet-water Agreement).
GE’s internal documents consistently show that its goal was to ride through zero volts at the point of interconnection, not elsewhere. See DTX-441 (email from R. Delmerico dated July 23, 2004 stating as an internal goal “0% voltage at the PCC for 1.0 second); DTX-164 (Wakileh memorandum indicating that “[w]ork is ongoing to meet a fault ride-through requirement of 0% voltage for 1 second at the point of interconnection”). GE did not provide any evidence suggesting that any customer was interested in ZVRT at the pad mount transformer. Additionally, GE’s own concept document, “Converter Control Concepts to meet Severe Grid Requirements with GE 1.5 MW Wind Turbine Generators,” shows that, so long as the fault occurs on the high-side of the pad-mount transformer, there would at least be a minimum 5% impedance of the pad-mount transformer itself — impedance enough for Erdman to ride through despite its need for 5% rated voltage. See DTX-268. Dr. Grady’s mistaken belief — repeated in the PTO’s RAN — that Erdman does not ride through zero volts at the high-side of the pad-mount transformer is based on an assumption that Erdman requires 5% voltage at some location outside the turbine, Vol. 6A Tr. 99:7-100:1, when in fact Erdman is explicit that the 5% measurement is taken at the turbine. See Vol. 2A Tr. 56:18-57:3.
The Court finds that Erdman is material to Claims 1 and 7 of the 705 patent. The claims in the '705 Patent are extremely broad, covering a method and apparatus of ride-through down to approximately zero volts on the electric power system. Given that breadth, Erdman is material. The Court therefore disagrees with the PTO’s current position and finds Erdman is material to claims 1 and 7.
B. Wobben and Hartge
Aloys Wobben, a principal owner and engineer of Germany’s largest wind turbine manufacturer, Enercon GmbH, filed the Wobben '941 application in September 2004. See DTX-1201. It was published on April 7, 2005. Id. This capability had also been announced earlier. Stefan Hartge, an Enercon engineer, presented a paper on the invention at an industry conference in Billund, Denmark in October 2003. See DTX-1202. The Hartge paper was called “Ride-Through Capability of Enercon-Wind Turbines.” Id. The parties agree that Hartge’s paper is functionally identical to Wobben '941. See Vol. IB Tr. 116:7-13; Vol. 6A Tr. 95:14-19.
In the recent right of appeal notice, the PTO found that Claims 1 and 7 are no longer rejected in view of Wobben '941. The RAN states that “[therefore, based on the evidence in the case, it is the examiner’s position that Wobben does not remain connected to the grid for grid voltages dropping to approximately zero volts. As such, the rejection is being withdrawn.” Right of Appeal Notice at 34. Nevertheless, the Court finds that Wobben teaches a method of riding through a zero voltage disturbance and is therefore material.
GE’s arguments regarding Wobben— endorsed by the PTO’s RAN — are very similar to its arguments about Erdman: that because the patent requires voltage at the turbine, the zero-voltage events occurring at a distant location are not true ZVRT, and thus are immaterial as prior art. Again, GE narrows the wide-ranging patent claims of the '705 patent, and then claims the ability of Wobben to ride through zero voltage events is immaterial because the zero volts are not measured at the turbine. But the Wobben patent is explicit in stating its ability to ride through zero voltage events. Figure 5 of the patent illustrates a configuration for riding through a “symmetrical 3-phase fault F with zero impedance.” DTX-1201 col. 9,1. 14-17. Dr. Harley testified to the Court that “a three-phase fault with zero impedance” is a zero voltage event. See Vol. 2A Tr. 9:23-10:21. According to Dr. Harley, because the “fault is reasonably close to the pad-mount transformer,” Wobben represents a “pretty severe test” of ride-through capability. See Vol. IB Tr. 119:17-120:16.
Wobben measures voltage on the generator side of the pad mount transformer, not at the point where the fault occurs. See Vol. IB Tr. 121:14-23 (App. 50). “[T]he impedance of the pad-mount transformer typically is around 5 percent, 6, maybe 7, depends from one manufacturer to the other.” Id. at 121:23-122:1. Thus, there will be some voltage at the place of measurement even when the voltage is in fact zero, or “approximately zero,” as claimed in the 705 patent, on the grid side of the pad mount transformer. See id. at 122:7-13. Wobben asserts that he tested zero voltage, though GE’s expert, Dr. Grady, did not believe the graphs showed sufficient evidence. Vol. 6B Tr. 36:10-2 (“Q. So that’s saying that