Siemens Gamesa Renewable Energy A/S v. General Electric Co. et al. (D. Mass. 21-cv-10216).

In September 2020, Siemens sued General Electric and GE Renewables North America, LLC in the Middle District of Florida, accusing the two of infringing a pair of patents relating to wind turbines.  The General Electric entities moved to dismiss or to transfer, arguing that GE Renewables (located in Florida) had no connection with wind turbine technology and that General Electric did not have a place of business in Florida.  The parties ultimately stipulated to transfer of the case to the District of Massachusetts, which occurred in February 2021.

Judge Young was assigned to the case, and as is typically the case, he set up a tight schedule to get to trial.  He rejected the parties’ joint proposed schedule that called for trial to begin in March 2023, saying that it contemplated “too long a time frame,” and indicated that the case would need to be ready for trial by April 2022.  He denied GE’s April 2021 motion for a stay pending inter partes review, which had been filed at a time when discovery had yet to occur and all of the asserted claims were being challenged by the inter partes petition.  He denied several motions to seal, indicating that the court does not adjudicate claims of confidentiality and that nothing other than trade secret information was to be sealed. 

On April 4, 2022, Judge Young denied motions for summary judgment filed by both parties – three by General Electric seeking summary judgment of noninfringement and two by Siemens seeking judgment of no inequitable conduct and judgment that certain references were not prior art.  He further clarified the construction of two claim terms that the summary judgment motions revealed to remain in dispute.  Judge Young’s reasoning was set forth at oral argument, the transcript of which is not yet available. 

Judge Young has now denied General Electric’s motion for reconsideration but granted it’s motion for clarification.  GE sought reconsideration on the revised claim constructions on the grounds that it had been denied notice and opportunity to respond to the newly issued constructions and that the constructions were incorrect as a matter of law.  GE asserted that Siemens raised the modified constructions for the first time at the hearing on summary judgment, but Judge Young noted that the clarification of claim scope arose as a result of GE’s motion for summary judgment, and that GE should have known that clarification was a possibility as that is standard for summary judgment determinations.  He further noted that Markman orders are provisional, and are always subject to revision at the request of the parties or sua sponte if the judge determines a need for such.  Finally, he noted that his Markman order has expressly reserved the question that was resolved by the revised claim construction, and that his revised construction in any event did not comport with the one sought by Siemans.

Judge Young further rejected GE’s argument that the clarified constructions were incorrect as a matter of law.  He had clarified two terms – “circular inner base structure” to clarify that it need not be, but may be, constituted by one continuous piece and “hollow chamber” or “empty space” to clarify that the space must have some part that is continuously hollow or empty but need not be entirely hollow or empty.  He determined that these constructions comported with the plain language, the use in the specification, and the dictionary definitions of the terms, and rejected GE’s arguments to the contrary.  He therefore denied the motion for reconsideration.

Judge Young did agree to clarify his denial of GE’s motion for summary judgment of noninfringement on the grounds that no infringing activity had occurred within the United States.  The wind turbine technology at issue is alleged to have been used in offshore wind farms, and Judge Young’s ruling had left uncertain whether he was finding factual disputes as to whether an infringing act had taken place within 12 nautical miles of the coastline of the United States (the “U.S. Territorial Sea” over which America asserts sovereign authority) or whether he had determined as a matter of law that the reach of the patent act extends beyond 12 nautical miles.  GE said that it needed clarification to adequately prepare for trial.  Judge Young agreed, and held that an act can be considered “within the United States” under the patent statutes if it involves the sale of offer for sale of something that will be “permanently or temporarily attached to the seabed… for the purposes of exploring for, developing, or producing energy resources within 200 miles of the United States coast.”  He cited to 43 U.S.C. 1333(a)(iii), which extends U.S. jurisdiction to the continental shelf for discovering and extracting resources.  As it was undisputed that an offer for sale had taken place that would have located turbines off the coast of Martha’s Vineyard – outside of the 12-mile zone but within the 200-mile zone – the offer would constitute an infringement within the United States.  He further noted that there were disputed issues of fact in any event as to whether other proposed sites off of the coast of New Jersey would fall within 12 miles of some part of the Atlantic coastline, which would also justify denial of the summary judgment motion.