General Electric Company, et al. v. Wilkins

Filing 187

AMENDED SUPPLEMENTAL SCHEDULING CONFERENCE ORDER, signed by Judge Oliver W. Wanger on 4/19/2011. (Mid Discovery Status Conference set for 7/14/2011 at 08:15 AM in Courtroom 3 (OWW) before Judge Oliver W. Wanger, Discovery due by 2/29/2012. Disposi tive Motions filed by 2/8/2012, Motion Hearing set for 4/2/2012 at 10:00 AM in Courtroom 3 (OWW) before Judge Oliver W. Wanger, Settlement Conference set for 2/8/2012 at 10:00 AM in Bakersfield at Truxtun (JLT) before Magistrate Judge Jennifer L. Thurston. Pretrial Conference set for 5/7/2012 at 11:00 AM in Courtroom 3 (OWW) before Judge Oliver W. Wanger. Jury Trial set for 6/19/2012 at 09:00 AM in Courtroom 3 (OWW) before Judge Oliver W. Wanger.) (Gaumnitz, R)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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GENERAL ELECTRIC COMPANY, a New
York corporation; and GE WIND
ENERGY, LLC, a Delaware limited
liability company,

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Plaintiffs,
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v.
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THOMAS WILKINS, an individual,
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Defendant.
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1:10-cv-0674 OWW JLT
AMENDED SUPPLEMENTAL
SCHEDULING CONFERENCE ORDER
Discovery Cut-Off: 2/29/12
Fact Discovery NonDispositive Motion Filing
Deadline: 12/5/11
Fact Discovery NonDispositive Motion Hearing
Date: 1/9/12 9:00 before
JLT
Expert Discovery NonDispositive Motion Filing
Deadline: 2/1/12

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Expert Discovery NonDispositive Motion Hearing
Date: 3/5/12 9:00 before
JLT

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Dispositive Motion Filing
Deadline: 2/8/12

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Dispositive Motion Hearing
Date: 4/2/12 10:00 Ctrm. 3

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Settlement Conference Date:
2/8/12 10:00 before JLT

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Pre-Trial Conference Date:
5/7/12 11:00 Ctrm. 3

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Trial Date: 6/19/12 9:00
Ctrm. 3 (JT-10 days)

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Mid-Discovery Status
Conference: 7/14/11 8:15
Ctrm. 3

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I.

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April 7, 2011.
II.

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Appearances Of Counsel.
Clement L. Glynn, Esq., and Jonathan A. Eldredge, Esq.,

appeared on behalf of Plaintiffs.

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Date of Scheduling Conference.

William C. Hahesy, Esq., and Thomas W. Winland, Esq.,
appeared on behalf of Defendant.

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Filiberto Agusti, Esq., Phillip Barber, Esq., and Daniel

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Blakey, Esq., appeared on behalf of Intervenors, Mitsubishi Heavy

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Industries.

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III.

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Summary of Pleadings.
A.

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GE’s Statement.
1.

As discussed in GE’s amended complaint (Docket No.

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76) and its motion for preliminary injunction (Docket No. 15), GE

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seeks a determination that Mr. Wilkins has no legitimate right to

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claim any interest in certain GE patented technology.

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well aware of GE’s position, Mr. Wilkins - a former employee of

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GE who was hired to invent - has licensed and offered via the

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internet to license GE’s technology to others after being put on

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notice that his right to license is disputed.

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2.

Although

GE is a leader in the development of renewable

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energy.

In an effort to make renewable and clean energy more

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widely available, GE has devoted significant resources to

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developing technology to capture wind energy to generate

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electricity.

In 2002, GE purchased the assets, including
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intellectual property, of Enron Wind Corporation (“Enron Wind”).

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At the time GE purchased Enron Wind, Mr. Wilkins was a Power

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Systems Engineer for Enron Wind whose employment required that he

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work on various design projects related to wind turbine generator

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systems.

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after GE’s acquisition of Enron Wind and then voluntarily

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resigned.

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Mr. Wilkins (along with other Enron Wind and GE employees)

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allegedly worked on various projects that resulted in two patents

Mr. Wilkins worked for GE for approximately six months

During his employment at Enron Wind (and later GE),

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related to wind turbine generators referred to as the ‘565 and

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‘985 Patents.1

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3.

Pursuant to agreements between Mr. Wilkins and GE

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(individually and as a successor to Enron Wind) and California

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statutory and common law, Wilkins was required to assign all

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rights he had in the patents to GE.

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and ‘985 Patents except Mr. Wilkins assigned their rights in the

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patents to GE.

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ownership in the patents during his employment with GE or Enron

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Wind, and GE filed its patent applications and received patents

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for the technology.

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4.

All inventors of the ‘565

Nevertheless, Mr. Wilkins made no assertion of

In 2009, GE filed a patent infringement action

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against Mitsubishi for infringing certain GE patents related to

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wind turbine generators.

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action with the International Trade Commission (“ITC”) against

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Mitsubishi related to its patent infringement.

Previously, in 2008, GE had filed an

During

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Mr. Wilkins was a co-inventor of the ‘565 Patent; GE
disputes that Mr. Wilkins was a co-inventor of the ‘985 Patent,
but Wilkins claims otherwise.
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proceedings before the ITC, Mr. Wilkins (who was hired by

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Mitsubishi as a consultant for the litigation) claimed for the

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first time that he was a co-inventor of the ‘985 Patent; Mr.

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Wilkins later claimed that he was also the owner of the ‘565

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Patent.

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patent infringement case and without GE’s knowledge or consent,

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he purported to grant a license to GE’s patents to Mitsubishi.

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After GE filed this case, Mr. Wilkins began offering to sell

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licenses to other interested third parties on his website in

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violation of his obligation to assign any such rights to GE.

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Mr. Wilkins revealed that during the pendency of the

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The ‘565 and ‘985 Patents were developed during

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Mr. Wilkins’ employment with Enron Wind or GE, and any

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contributions by Wilkins would have been part of his job duties

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as a Power Systems Engineer.

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and legally obligated to assign any purported rights in the

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technology to GE.

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legal obligations, Mr. Wilkins refuses to assign to GE his

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alleged ownership rights.

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6.

Thus, Mr. Wilkins was contractually

Nevertheless, despite his contractual and

On October 19, 2010, the Court granted GE’s motion

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for preliminary injunction to prevent Mr. Wilkins from continuing

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his licensing activities.

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B.

(Docket No. 83.)

Mr. Wilkins’ and Mitsubishi’s Statement.
1.

Discovery has just begun, and Mr. Wilkins and

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Mitsubishi will assert other legal and/or factual issues that may

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arise or be discovered during the discovery process.

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Mr. Wilkins has only recently filed his counterclaim, which makes

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numerous allegations that GE has yet to admit or deny.

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factual allegations in Mr. Wilkins’ counterclaim admitted by GE
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Moreover,

Any

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will be designated as uncontested facts.

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in Mr. Wilkins’ counterclaim denied by GE will be designated as

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contested facts.

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supplement this statement in light of the admissions and denials

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in GE’s answer.

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Mitsubishi make the following statement.

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2.

Any factual allegations

Mr. Wilkins and Mitsubishi reserve the right to

Subject to those reservations, Mr. Wilkins and

Mr. Wilkins worked with Zond Energy Systems

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(“Zond”) and Enron Wind (“Enron”), Zond’s successor, beginning in

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1998.

Mr. Wilkins left Enron in mid-2001 to form his own

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consulting business.

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to request his assistance in troubleshooting a number of Enron

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wind turbines, and Mr. Wilkins began performing that work for

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Enron in January 2002.

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2002, GE purportedly acquired certain of Enron’s wind turbine

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business assets, expressly excluding all Enron employment

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contracts.

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stopped working with GE in November 2002, but was not hired to

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invent by GE.

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Subsequently, Enron contacted Mr. Wilkins

When Enron declared bankruptcy in April

Mr. Wilkins began working with GE in May 2002, and

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Mr. Wilkins began working with Zond in 1998 as an

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assembly technician, and he was not hired to invent.

Shortly

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after joining Zond, Mr. Wilkins began working on Zond wind

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turbines installed at Algona, Iowa (“Algona”) and Zond wind

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turbines installed at Lake Benton, Minnesota (“Lake Benton”).

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That work resulted in those turbines being enabled to ride

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through voltage disturbances on the utility grid down to 70% of

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nominal voltage (i.e., “low voltage ride through” or “LVRT”) by

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no later than mid-2001.

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inter alia, the idea of using an uninterruptible power supply to

Mr. Wilkins’ contributions included,

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meet LVRT requirements.

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Lake Benton and Algona turbines being enabled to provide reactive

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power support by no later than mid-2001.

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during this time period entitled him to be named as an inventor

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of both the ‘565 and ‘985 patents.

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4.

Mr. Wilkins’ work also resulted in the

Mr. Wilkins’ work

In 2000, Mr. Wilkins traveled to Germany to

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explain his ideas and work on applying the LVRT technology

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previously used in the Zond wind turbines to the 1.5 MW wind

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turbines of Tacke Wind Energie (a Eurpoean predecessor-in-

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interest to Enron Wind).

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Wilhelm Hanssen, one of the co-inventors subsequently named by GE

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on the ‘985 patent.

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wind turbines at Lake Benton and Algona, and his work on them

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regarding LVRT.

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to begin working as an independent consultant not employed by

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Zond, Enron, or anyone else.

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During that visit, Mr. Wilkins met with

Mr. Wilkins told Mr. Janssen about the Zond

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Mr. Wilkins subsequently left Enron in mid-2001

In late 2001, Enron contacted Mr. Wilkins to seek

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his help with certain Tacke/Enron 1.5 MW wind turbines installed

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or to be installed in the United States.

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been equipped with technology similar to that used in the Zond

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wind turbines at Lake Benton and Algona that Mr. Wilkins had

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worked on; however, the wind turbines were not successfully

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accomplishing reactive power support, and had not yet implemented

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LVRT.

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consultant not employed by Zond, Enron, or anyone else.

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brought Mr. Wilkins back beginning in January 2002 to

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troubleshoot the 1.5 MW U.S. wind turbines and assist with LVRT

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implementation.

Those wind turbines had

When Enron contacted Mr. Wilkins, he was an independent

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Enron

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Upon his return to Enron in January 2002,

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Mr. Wilkins began troubleshooting 1.5 MW wind turbines that

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incorporated reactive power support technology, in an effort to

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enable them to accomplish reactive power support, and assisting

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with the implementation of LVRT in the 1.5 MW wind turbines, in

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which LVRT was already installed.

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time hired to invent, and Mr. Wilkins refused to sign—and never

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did sign—any agreement obligating him to assign inventions to

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Enron.

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Mr. Wilkins was not at that

Enron acceded to Mr. Wilkins’ refusal to sign any

agreement obligating him to assign inventions to Enron.
7.

GE acquired certain Enron assets in April 2002,

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but specifically excluded “all rights of [Enron] under (A) any

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and all employment contracts (other than obligations for EWC for

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the Divestiture Bonuses and Retention Payments).”

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acquired no rights of Enron under any employment contracts,

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including any employment contract that GE alleges that Enron had

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with Mr. Wilkins.

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Thus, GE

In May 2002, Mr. Wilkins began working with GE.

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Mr. Wilkins was never asked to sign, and never did sign, any

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employment contract with GE, and he was not hired to invent.

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May 2002, GE requested that Mr. Wilkins sign an Employee

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Innovation and Proprietary Information Agreement (“EIPI

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Agreement”), which Mr. Wilkins refused to sign and never

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thereafter signed.

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agreement obligating him to assign inventions to GE—and GE

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acceded to Mr. Wilkins’ refusal to sign any such agreement.

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9.

Indeed, Mr. Wilkins never signed any

In May 2002, Mr. Wilkins signed an invention

disclosure with GE.

GE has asserted that this invention
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In

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disclosure—filed with the Court in a heavily redacted form—was

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the invention of the technology of the ’565 patent.

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Mr. Wilkins believes that the un-redacted document merely

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discloses an add-on technology to the already-invented, already-

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implemented, technology of the ’565 patent.

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invention disclosure merely suggested that motoring of the wind

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turbines would allow for continuous reactive power—a feature that

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never became part of the ’565 patent.

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10.

However,

The May 2002

On May 29, 2002, Mr. Wilkins received a document

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outlining certain GE policies, and he signed that document with

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the annotation “All Rights Reserved.”

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Mr. Wilkins’ work with GE that Mr. Wilkins had reserved all of

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his rights by signing that document with “All Rights Reserved,”

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and GE acceded to Mr. Wilkins’ signature of the document with

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“All Rights Reserved.”

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GE never disputed during

In August 2002, Mr. Wilkins traveled to Germany to

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work on applying the LVRT technology previously used in the Zond

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wind turbines to Tacke/Enron 1.5 MW wind turbines.

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Mr. Wilkins met with Wilhelm Janssen and Henning Lütze, two of

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the co-inventors subsequently named by GE on the ’985 patent.

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Mr. Wilkins told Mr. Janssen and Mr. Lütze about his work at Lake

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Benton and Algona regarding LVRT.

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he believes Mr. Wilkins should have been named as a co-inventor

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of the ’985 patent.

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12.

In Germany,

Mr. Lütze has testified that

When Mr. Wilkins left GE in November 2002, he told

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GE that he had never signed an agreement to assign inventions to

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GE.

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13.

On January 24, 2003, GE’s patent attorney filed a
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patent application at the U.S. Patent and Trademark Office (U.S.

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Patent Application No. 10/350,452, “the ’452 application”) that

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expressly identified Mr. Wilkins as an inventor.

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notified Mr. Wilkins that he had been identified by GE’s patent

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attorney as an inventor of the ’452 application as filed in the

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U.S. Patent and Trademark Office.

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GE’s patent attorney caused Mr. Wilkins’ name to be removed from

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the ’452 application.

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submitted to the U.S. Patent and Trademark Office inventor

GE never

After filing the application,

GE’s patent attorney also subsequently

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declarations signed by only five of the six originally named

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inventors, failing to submit an inventor declaration from Mr.

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Wilkins.

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declaration in the ’452 application or asked whether he believed

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he was an inventor of, or made any contribution to, the claimed

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subject matter of the ’452 application or the ’985 patent.

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985 patent issued on July 26, 2005 and did not identify Wilkins

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as an inventor.

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GE never asked Mr. Wilkins to sign an inventor

14.

The

Upon information and belief, GE never disclosed

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the existence of the Zond wind turbines installed at Lake Benton

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and Algona, or Mr. Wilkins’ work on them between 1998 and 2001

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relating to LVRT, to the U.S. Patent and Trademark Office during

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prosecution of the ’452 application that issued as the ’985

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patent.

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claims of the ’985 patent are based, in part, on Mr. Wilkins’

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ideas regarding LVRT that he conceived in his work between 1998

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and 2001 on the Zond wind turbines installed at Lake Benton and

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Algona.

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standard, the U.S. International Trade Commission (“ITC”) and

GE withheld that information despite the fact that the

Indeed, applying a clear and convincing evidence

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U.S. ITC Judge Carl Charneski determined that Mr. Wilkins should

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have been named as an inventor of the ’985 patent.

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15.

On August 18, 2003, GE’s patent attorney filed a

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patent application at the U.S. Patent and Trademark Office (U.S.

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Patent Application No. 10/643,297, “the ’297 application”) that

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identified Mr. Wilkins as an inventor.

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connection with the ’297 application, GE sent Mr. Wilkins an

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Inventor Declaration and Power of Attorney form and an Assignment

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form and requested that he sign both forms.

On February 10, 2004, in

The Assignment form

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sent to Mr. Wilkins stated that Mr. Wilkins was obligated to

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assign his inventions “pursuant to an Employee Innovation and

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Proprietary Information Agreement or other agreement and/or for

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other good and valuable consideration ….”

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Mr. Wilkins informed GE’s patent attorney that he would not sign

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either the Inventor Declaration and Power of Attorney form or the

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Assignment form.

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patent attorney, who, upon information and belief, received them

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on February 24, 2004.

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his rights in the ’297 application or the ’565 patent.

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16.

On February 11, 2004,

Mr. Wilkins returned the unsigned forms to GE’s

Mr. Wilkins never signed an assignment of

The alleged facts surrounding Mr. Wilkins’ refusal

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to sign an assignment of the ’297 application were presented in a

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declaration filed by GE’s patent attorney at the U.S. Patent and

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Trademark Office on March 15, 2004, and stamped as being received

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on March 17, 2004.

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beginning on or about March 17, 2004.

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Thus, that information was publicly available

On March 16, 2004, GE’s patent attorney submitted

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an assignment document relating to the ’297 application at the

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U.S. Patent and Trademark Office, which was publicly recorded on
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March 19, 2004.

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signatures from all named inventors except for Mr. Wilkins.

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Thus, on or about March 19, 2004, the public was on notice that

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GE had not recorded any assignment from Mr. Wilkins of his rights

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as an inventor named in the ’297 application.

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18.

The assignment of the ’297 application contained

Despite naming Mr. Wilkins as an inventor of the

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’297 application, GE did not disclose the details of the Zond

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wind turbines installed at Lake Benton and Algona, or Mr.

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Wilkins’ work on them between 1998 and 2001 relating to reactive

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power support, to the U.S. Patent and Trademark Office during

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prosecution of that application.

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19.

The ’565 patent issued without any recorded

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assignment from Mr. Wilkins.

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inventor of ideas claimed in the ’565 patent who had not assigned

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his rights when the ’565 patent issued, the ’565 patent issued

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jointly to GE and Mr. Wilkins as co-owners.

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Law, each of the joint owners of a patent may make, use, offer to

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sell, or sell the patented invention within the United States, or

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import the patented invention into the United States, without the

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consent of and without accounting to the other owners.

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consented to these rights when it added Mr. Wilkins as a co-

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inventor/co-owner of the ’565 patent.

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20.

Thus, because Mr. Wilkins is a co-

Under U.S. Patent

GE

In this action, GE has asserted ownership of any

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inventions made by Mr. Wilkins during his work with Enron or GE.

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Defendant and Intervenors dispute GE’s claims.

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executed any agreement to assign his inventions to Enron or GE.

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Mr. Wilkins was not hired to invent.

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hire” doctrine and California Labor Code § 2860 do not apply in
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Mr. Wilkins never

The common law “work-for-

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these circumstances.

Further, GE did not acquire any Enron

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employment contracts—including any alleged contracts between

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Enron and Mr. Wilkins—when GE acquired certain of Enron’s assets

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out of bankruptcy; therefore, GE cannot assert against

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Mr. Wilkins whatever obligation, if any, that he owed to Enron.

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Defendant and Intervenors have also raised various affirmative

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defenses, including that GE’s claims are barred by the statutes

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of limitation, estoppel, waiver, laches, acquiescence, consent,

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unclean hands, the statute of frauds, and the statutory and

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common law prohibition on enforcement of unconscionable

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contracts; that GE lacks standing; that Mr. Wilkins’ actions are

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or were privileged, justified, or excused; that the alleged

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contracts are illegal and unenforceable to the extent they

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violate state law; and that GE purports to have an adequate

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remedy at law that bars any equitable relief.

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21.

As counterclaims, Defendant and Intervenors

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contend that the ’985 patent should be corrected under 35 U.S.C.

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§ 256 to identify Mr. Wilkins as a co-inventor.

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Intervenors seek a declaration that Mr. Wilkins is a co-owner of

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the ’985 patent.

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a co-owner of the’565 patent, and he seeks damages relating to

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GE’s conversion of Mr. Wilkins’ ownership interests in both

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patents and GE’s unjust enrichment.

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IV.

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Mr. Wilkins also seeks a declaration that he is

Orders Re Amendments To Pleadings.
A.

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Defendant and

GE’s Statement.
1.

GE does not anticipate any amendments to its

pleadings, or adding any additional parties to this litigation.
B.

Mr. Wilkins’ and Mitsubishi’s Statement.
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1.

See Mr. Wilkins’ and Mitsubishi’s discovery and

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trial calendars, in Sections VI.A.2 and VIII.B below.

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The parties do not anticipate amending the pleadings at

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this time.

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C.

Based on agreement of the parties, all parties shall

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have to and including June 30, 2011 to file any amendments to

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pleadings or to add additional parties and/or claims without the

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necessity of a motion.

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Proc. 15 shall be required.

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V.

Thereafter, a motion under Fed. R. Civ.

Factual Summary.

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A.

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Proceedings.

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Admitted Facts Which Are Deemed Proven Without Further

Discovery has just begun, and the parties will assert other

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factual issues that may arise or be discovered during the

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discovery process.

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only recently filed their counterclaims, which makes numerous

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allegations that GE has yet to admit or deny.

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allegations in Mr. Wilkins’ or Mitsubishi’s counterclaims

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admitted by GE will be designated as uncontested facts.

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factual allegations in Mr. Wilkins’ or Mitsubishi’s counterclaims

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denied by GE will be designated as contested facts.

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and Mitsubishi reserve the right to supplement this statement in

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light of the admissions and denials in GE’s answer.

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do not admit by way of this statement that the listed facts are

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relevant and/or admissible at trial.

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reservations, the parties make the following statement.

Moreover, Mr. Wilkins and Mitsubishi have

Any factual

Any

Mr. Wilkins

The parties

Subject to those

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1.

General Electric Co. is a New York corporation.

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2.

GE Wind Energy, LLC, is a Delaware limited liability
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company.

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3.

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4.

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Thomas Wilkins is an individual.
Mitsubishi Heavy Industries, Ltd., is a corporation

incorporated under the laws of the Country of Japan.
5.

Mitsubishi Power Systems Americas, Inc., is a

corporation incorporated under the laws of the State of Delaware.
6.

Mr. Wilkins is a co-inventor of the ’565 patent.

Docket No. 76 ¶ 17.
7.

Mr. Wilkins refused to sign an assignment of the rights

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in the ‘565 patent when GE requested that he do so in 2004.

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Docket No. 76 ¶ 65.

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8.

Mr. Wilkins signed a document acknowledging receipt of

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a “guide to GE Policies” in May 2002, which he signed with “All

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Rights Reserved.”

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B.

Docket No. 17-1 at 5.

Contested Facts2
By listing a fact issue herein, the parties do not

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concede that the issue is purely a factual issue and not a mixed

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issue of fact and law or an issue of law.

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1.

Whether Thomas Wilkins was listed as one of six

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inventors when the application for the ’985 patent was filed.

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Whether GE’s Counsel removed Thomas Wilkins from the application

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for the ’985 patent after that application was filed.

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2.

Whether Mr. Wilkins is a record co-owner of the

’565 patent, and has been since the ’565 patent issued in 2005.
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GE objects to Wilkins’ and MHI’s wholesale
incorporation of their answers and counterclaims into this
section as it is antithetical to the purpose of a joint
statement, and does not assist the Court in defining the
material issues. Mr. Wilkins believes this statement is
required in order to protect his interests.

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3.

Whether Mr. Wilkins refused to assign the rights

in his inventions when GE made its request in 2004.
4.

Whether Mr. Wilkins resides in Tehachapi,

California, and is a citizen of California.
5.

Whether Mr. Wilkins resided within the Eastern

District of California at all times relevant to GE’s complaint.
6.

Whether GE is entitled to the declaratory relief

that it seeks.
7.

Whether GE has rightfully acquired many patents

relating to wind turbines.
8.

Whether Mr. Wilkins was employed by Enron Wind

and/or GE as alleged in GE’s Amended Complaint.
9.

Whether Mr. Wilkins’ job responsibilities with

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Enron and GE included design, development, installation, and

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testing of wind turbine generators.

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10.

Whether Mr. Wilkins was expected to innovate in

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the area of wind turbine generators for Enron and GE, as alleged

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in GE’s Amended Complaint.

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11.

Whether Mr. Wilkins was hired by Enron and GE to

invent, as alleged in GE’s Amended Complaint.
12.

Whether Mr. Wilkins entered into any employment

agreement with GE.
13.

Whether GE ever asked Mr. Wilkins to sign an

employment agreement.
14.

Whether Mr. Wilkins was required to sign, and did

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sign, a Confidentiality and Inventions Agreement (“C&I

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Agreement”) that imposed certain obligations with respect to

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inventions as between him and Enron, as alleged in GE’s Amended
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Complaint.
15.

Whether Enron acceded to Mr. Wilkins’ refusal to

sign a C&I Agreement.
16.

Whether Mr. Wilkins was required to execute, and

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did execute, an Employee Innovation and Proprietary Information

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Agreement (“EIPI Agreement”) that imposed certain obligations

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with respect to inventions as between him and GE, as alleged in

8

GE’s Amended Complaint.

9

17.

10
11

Whether GE acceded to Mr. Wilkins’ refusal to

execute an EIPI Agreement.
18.

Whether Mr. Wilkins’ signing a receipt of certain

12

documents from GE, with the notation “all rights reserved,”

13

imposed any obligations on Mr. Wilkins with respect to

14

intellectual property, inventions, or the alleged EIPI Agreement.

15

19.

Whether GE acceded to Mr. Wilkins’ signature of a

16

document acknowledging receipt of certain documents from GE with

17

the notation “all rights reserved.”

18

20.

Whether Mr. Wilkins signed any documents received

19

from GE concurrently with the document acknowledging receipt of

20

such documents.

21

21.

Whether Mr. Wilkins was obligated under California

22

law to assign to Enron intellectual property developed during his

23

work with Enron.

24

22.

Whether GE “stepped into the shoes of Enron” with

25

respect to Mr. Wilkins obligations, if any, to Enron regarding

26

intellectual property.

27

23.

28

Whether Mr. Wilkins was obligated under California

law to assign to GE intellectual property developed during the
16

1

course of his work with GE.

2
3

24.

Whether GE is identified on the face of the ’565

patent as an assignee of Mr. Wilkins’ rights in that patent.

4

25.

Whether GE was required to and/or failed to

5

disclose Mr. Wilkins’ contributions to the ’565 patent, and the

6

work performed at Algona and Lake Benton, to the U.S. Patent and

7

Trademark Office during prosecution of the application for the

8

’565 patent.

9

26.

Whether Mr. Wilkins was obligated under the

10

alleged C&I Agreement, EIPI Agreement, and/or California law to

11

assign to GE his interest in the ’565 patent and the subject

12

matter described and claimed in the ’565 patent.

13

27.

Whether Mr. Wilkins stated to GE’s patent attorney

14

that he was not willing to assist GE with the application for the

15

’565 patent because he did not believe GE treated its employees

16

properly as alleged in GE’s Amended Complaint; whether

17

Mr. Wilkins stated that he believed that he owned any

18

intellectual property rights in the ideas disclosed or claimed in

19

the patent application; and whether Mr. Wilkins repudiated or

20

denied his obligation to assign to GE intellectual property

21

rights for any and all inventions made while working with Enron

22

and GE.

23

28.

Whether Mr. Wilkins stated the “circumstances” of

24

his refusal to assign the rights in his inventions in 2004 as GE

25

has alleged in its Amended Complaint.

26

29.

Whether in May 2010 Wilkins first asserted an

27

ownership right to the ’565 patent and the invention covered by

28

the ‘565 patent as alleged in GE’s Amended Complaint.
17

1

30.

Whether Mr. Wilkins is a co-inventor of subject

2

matter claimed in the ’985 patent and whether he has assigned

3

those rights to anyone.

4

31.

Whether the International Trade Commission (“ITC”)

5

and ITC Administrative Law Judge Charneski ruled that Thomas

6

Wilkins is an inventor of the ’985 patent having no obligation to

7

assign his rights to GE.

8

32.

Whether GE was required to and/or failed to

9

disclose Mr. Wilkins’ contributions to the ’985 patent, and the

10

work performed at Algona and Lake Benton, to the U.S. Patent and

11

Trademark Office during prosecution of the application for the

12

’985 patent.

13

33.

Whether Mr. Wilkins was obligated under the

14

alleged C&I Agreement, the alleged ElPI Agreement, and/or

15

California law to assign to GE his ownership interest in the ’985

16

patent and the invention covered by the ’985 patent.

17
18

34.

When Mr. Wilkins first asserted an ownership right

to the ’985 patent and the invention covered by the ’985 patent.

19

35.

Whether Mr. Wilkins refused to assign his

20

purported rights in the ‘985 patent when GE requested he do so,

21

and whether GE made such a request in 2010.

22

36.

Whether GE has acted conscientiously in protecting

23

its alleged ownership of the ’985 patent, and whether GE has

24

promptly met every challenge to the validity of the ’985 patent

25

and GE's ownership of that patent, as alleged in GE’s Amended

26

Complaint.

27
28

37.

Whether Mr. Wilkins is a co-inventor of the ’985

patent and co-owns the ’985 patent and inventions covered by the
18

1
2

’985 patent.
38.

The value of the ’565 patent, and whether

3

Mr. Wilkins has wrongfully placed a cloud on the ownership and

4

title of that patent.

5

39.

The value of the ’985 patent, whether Mr. Wilkins

6

has wrongfully placed a cloud on the ownership and title of that

7

patent, the financial impact of that alleged cloud on the

8

ownership and title of the ’985 patent and on GE’s litigation

9

with Mitsubishi, and whether that alleged cloud has wrongfully

10
11

interfered with GE’s alleged rights to enforce its patent rights.
40.

Whether Mr. Wilkins has violated agreements, if

12

any, to assign to GE intellectual property developed in the

13

course of his work with Enron and GE, as well as whether any

14

assignment obligations arise under California law.

15

41.

Whether GE is entitled to a declaration that

16

Mr. Wilkins is obligated under California law and/or by contract

17

to assign to GE anything.

18

42.

Whether GE is entitled to an order of specific

19

performance that Mr. Wilkins execute all necessary documents to

20

formally assign to GE anything.

21

43.

Whether Mr. Wilkins owes any assignment

22

obligations to GE, and whether GE is entitled to an order of

23

specific performance compelling Mr. Wilkins to comply with any

24

such obligations.

25

44.

Whether, pursuant to the alleged C&I Agreement

26

and/or EIPI Agreement, Mr. Wilkins agreed that GE owns the

27

invention covered by the ’985 patent and/or ’565 patent, and

28

Mr. Wilkins was required to assign to GE any interest in the '985
19

1

patent and/or ’565 patent and the subject matter described and

2

claimed in the '985 patent and/or ’565 patent, as alleged in GE’s

3

Amended Complaint.

4

45.

Whether, pursuant to the alleged C&I Agreement,

5

Mr. Wilkins appointed any officer of GE as his attorney-in-fact

6

to execute documents necessary to assign to GE all rights for any

7

invention developed by Mr. Wilkins.

8
9

46.

Whether, pursuant to the alleged C&I Agreement

and/or EIPI Agreement, Mr. Wilkins was constrained from licensing

10

the '985 patent and/or the invention covered by the '985 patent

11

to third parties.

12

47.

Whether, pursuant to the alleged C&I Agreement

13

and/or EIPI Agreement, Mr. Wilkins was constrained from licensing

14

the ’565 patent and/or the invention covered by the ’565 patent

15

to third parties.

16

48.

Whether Mr. Wilkins breached any alleged

17

obligations under any alleged C&I Agreement and/or EIPI Agreement

18

as alleged in GE’s Amended Complaint, and the date of any such

19

alleged breach.

20

49.

Whether GE has performed or been excused from

21

performing all of its obligations under the alleged C&I Agreement

22

and/or EIPI Agreement.

23

50.

Whether as a direct and proximate result of

24

Mr. Wilkins’ alleged breaches of the C&I Agreement and/or EIPI

25

Agreement, GE has suffered damages in excess of $75,000 exclusive

26

of interest and costs, as alleged in GE’s Amended Complaint, and

27

the amount of any such alleged damages.

28

51.

Whether GE has an adequate remedy at law for
20

1

Mr. Wilkins’ alleged breach of the alleged C&I Agreement and/or

2

EIPI Agreement, or whether GE is entitled to an order requiring

3

that Mr. Wilkins specifically perform his alleged obligation(s)

4

under those agreements.

5

52.

Whether absent injunctive relief founded on its

6

alleged C&I Agreement and/or EIPI Agreement, GE will suffer any

7

irreparable harm.

8
9
10
11

53.

Whether GE is entitled to the injunctive relief

that it seeks in its Amended Complaint based on the alleged C&I
Agreement and/or EIPI Agreement.
54.

Whether, pursuant to California law, Mr. Wilkins

12

is required to assign to GE his ownership interest in the '985

13

patent and/or ’565 patent and the subject matter described and

14

claimed in the '985 patent and/or ’565 patent.

15

55.

Whether Mr. Wilkins is a co-owner of the '985

16

patent and the invention covered by the '985 patent, or whether

17

Mr. Wilkins is required to assign his rights in the '985 patent

18

and the invention covered by the '985 patent to GE.

19
20
21

56.

When the “actual controversy” alleged in GE’s

declaratory judgment claims ripened.
57.

Whether GE is entitled to the declaratory relief

22

that it seeks under the alleged C&I Agreement and/or EIPI

23

Agreement with regard to the ’985 patent and/or the ’565 patent.

24

58.

Whether Mr. Wilkins’ refusal to assign

25

inventorship rights to GE in 2004 was a breach of any alleged

26

obligations.

27
28

59.

Whether GE suffered actionable harm under

Mr. Wilkins’ alleged obligations due to Mr. Wilkins’ 2004 refusal
21

1

to assign inventorship rights to GE, and the date of that

2

actionable harm.

3
4
5

60.

Whether, as alleged in GE’s Amended Complaint, it

was not until 2010 that GE suffered actual and appreciable harm.
61.

Whether Mr. Wilkins is constrained under

6

California law from offering to license the '565 patent and/or

7

’985 patent and/or the subject matter claimed in the '565 patent

8

and/or ’985 patent to third parties

9

62.

Whether, pursuant to the alleged C&I Agreement,

10

Mr. Wilkins appointed any officer of Enron as his attorney-in-

11

fact to execute any documents necessary to assign to Enron all

12

rights to any invention made by Mr. Wilkins in the course of his

13

work with Enron.

14
15
16
17
18

63.

Whether GE has been assigned Enron's alleged

rights under the alleged C&I Agreement.
64.

Whether Mr. Wilkins has appointed any officer of

GE as his attorney-in-fact.
65.

When the “actual controversy” alleged in GE’s

19

declaratory judgment claims ripened as to the alleged appointment

20

of an Enron/GE officer as Mr. Wilkins’ attorney-in-fact.

21

66.

Whether GE is entitled to a declaration that

22

Mr. Wilkins has appointed any officer of GE to act as his

23

attorney-in-fact for the purpose of executing documents necessary

24

to assign to GE all rights to any invention made by Mr. Wilkins

25

in the course of his work with Enron or GE.

26

67.

Whether, pursuant to the alleged C&I Agreement,

27

Mr. Wilkins agreed that GE owns any invention made by Mr. Wilkins

28

during the course of his work with Enron and Mr. Wilkins was
22

1

required to assign to GE any interest claims to have in such

2

inventions.

3

68.

Whether, pursuant to the alleged EIPI Agreement,

4

Mr. Wilkins was required to assign to GE any interest he claims

5

to have in any invention made by Mr. Wilkins during the course of

6

his work with GE.

7

69.

Whether, pursuant to California law, Mr. Wilkins

8

was required to assign to GE any interest he claimed to have in

9

any invention made by Mr. Wilkins during the course of his work

10
11

with Enron and GE.
70.

Whether GE is entitled to a declaration as between

12

it and Mr. Wilkins (i) that GE is the sole legal and equitable

13

owner of any invention made by Mr. Wilkins during his work with

14

Enron and GE, (ii) that Mr. Wilkins has no ownership interest in

15

any invention made by Mr. Wilkins during his work with Enron and

16

GE, and (iii) to an order that Mr. Wilkins execute any necessary

17

documents to confirm formally GE's ownership and to remove the

18

alleged cloud on GE's ownership created by his failure to do so.

19

71.

Whether “[Mr.] Wilkins merely informed GE’s German

20

engineers . . . on prior art [as to the ’985 patent],” as alleged

21

by GE, or whether Mr. Wilkins actually informed those engineers

22

of the inventions he had conceived between 1998 and 2001, before

23

Mr. Wilkins quit working with Zond and Enron, and before

24

Mr. Wilkins’ second period of work with Enron began in 2002.

25

72.

Whether Mr. Wilkins’ contributions to the ’565

26

patent were “first thought of by [Mr. Wilkins] on May 31, 2002

27

(while he was working for GE),” as alleged by GE, or whether

28

Mr. Wilkins’ inventive contributions to the ’565 patent were
23

1

actually conceived between 1998 and 2001, before Mr. Wilkins quit

2

working with Zond and Enron, and before Mr. Wilkins’ second

3

period of work with Enron began in 2002.

4

73.

Whether Mr. Wilkins assigned or agreed to assign

5

his rights in the ’985 patent or ’565 patent, or his ideas

6

described in the ’985 patent or ’565 patent, to Zond or Enron.

7
8

74.

Whether Zond and Enron acceded to Mr. Wilkins’

retention of rights.

9

75.

Whether Mr. Wilkins assigned or agreed to assign

10

his rights in the ’985 patent or ’565 patent, or his ideas

11

described in the ’985 patent or ’565 patent, to GE.

12
13
14

76.

Whether GE acceded to Mr. Wilkins’ retention of

77.

Whether Mr. Wilkins is or was obligated to assign

rights.

15

his rights in the ’985 patent or ’565 patent, or his ideas

16

described in the ’985 patent or ’565 patent, to Zond or Enron.

17

78.

Whether Mr. Wilkins is or was obligated to assign

18

his rights in the ’985 patent or ’565 patent, or his ideas

19

described in the ’985 patent or ’565 patent, to GE.

20

79.

Whether by virtue of his inventorship, Mr. Wilkins

21

possesses an undivided ownership interest in the ’565 patent and

22

the ’985 patent.

23

80.

Whether GE has wrongfully interfered, and

24

continues to interfere, with Mr. Wilkins’ ownership interests in

25

the ’565 patent and the ’985 patent.

26

81.

Whether GE’s wrongful conduct has directly and

27

proximately caused injury, and will continue to cause injury, to

28

Mr. Wilkins in an amount not yet determined.
24

1

82.

Whether GE’s conduct complained of was oppressive,

2

malicious, willful and/or fraudulent, and Mr. Wilkins is entitled

3

to an award of punitive damages.

4

83.

Whether GE has wrongfully claimed, and continues

5

to wrongfully claim, that it is the sole and exclusive owner and

6

assignee of the ’565 patent and the ’985 patent.

7

84.

Whether GE has derived, and will continue to

8

derive, substantial benefits, including licensing revenue, from

9

its wrongful claims of sole and exclusive ownership of the ’565

10

patent and the ’985 patent.

11

85.

Whether GE unjustly retained, and will continue to

12

retain, substantial benefits at the expense of Mr. Wilkins,

13

injuring him in an amount not yet determined.

14

86.

Whether Mr. Wilkins’ alleged obligations to Enron

15

and/or GE were breached in 2004 when he refused GE’s request that

16

he assign the rights in his inventions.

17

87.

Whether Mr. Wilkins asserted an ownership interest

18

in his inventions in 2004 when he refused GE’s request that he

19

assign the rights in his inventions.

20

88.

Whether GE suffered “actual and appreciable harm”

21

(1) in 2004, when Mr. Wilkins refused to assign to GE the rights

22

in his inventions and the public records of the U.S. Patent and

23

Trademark Office reflected that refusal, and (2) in 2005, when

24

the ’565 patent issued to Mr. Wilkins as a co-owner.

25

from Docket No. 76 ¶¶ 37, 38, 48, 49, 59, 64, 65, 75, 76, 86, 92,

26

99.)

27
28

89.

(Quotes

Whether GE was aware of Mr. Wilkins’ potential

claim to the invention of the ’985 patent at least as early as
25

1

that patent’s filing date when GE listed Mr. Wilkins as an

2

inventor.

3

90.

Mr. Wilkins and Mitsubishi incorporate herein as

4

contested facts all factual allegations in his counterclaim.

5

has not yet responded to Mr. Wilkins’ and Mitsubishi’s

6

counterclaims.

7

allegations in Mr. Wilkins’ or Mitsubishi’s counterclaims, then

8

those facts will be deemed uncontested.

9

VI.

10

GE

In the event that GE admits any of the factual

Legal Issues.
Discovery has just begun, and the parties will assert other

11

legal issues that may arise or be discovered during the discovery

12

process.

13

filed their counterclaims, which make numerous allegations that

14

GE has yet to admit or deny.

15

Mr. Wilkins’ or Mitsubishi’s counterclaims admitted by GE will be

16

designated as undisputed legal issues.

17

Mr. Wilkins’ or Mitsubishi’s counterclaims denied by GE will be

18

designated as disputed legal issues.

19

right to supplement this statement in light of the admissions and

20

denials in GE’s answer.

21
22

A.

Moreover, Mr. Wilkins and Mitsubishi have only recently

Any legal allegations in

Any legal allegations in

The parties reserve the

Uncontested.
1.

This Court has personal and subject-matter

23

jurisdiction over the claims in GE’s amended complaint and Mr.

24

Wilkins’ and Mitsubishi’s counterclaims.

25

under 28 U.S.C. § 1332 based on the diversity of the parties and

26

the amount in controversy in excess of $75,000.

27
28

2.

Jurisdiction exists

This Court is a proper venue for this dispute.

Venue is proper under 28 U.S.C. § 1391.
26

1

3.

The parties are unable to determine whether or not

2

choice of law selection for all issues in the case can be

3

determined as a matter of law at this time.

4

in the event they do not agree that the law of the forum,

5

California law, provides the substantive rule of decision for

6

issues in this diversity case applies, present all issues

7

concerning choice of law in motions that shall be filed on or

8

before September 1, 2011.

9

before September 15, 2011.

The parties shall,

Oppositions shall be filed on or
Replies shall be filed on or before

10

September 22, 2011, and a hearing shall be held on October 3,

11

2011.

12
13

B.

Disputed Legal Issues3
By listing a legal issue herein, the parties do not

14

concede that the issue is purely a legal issue and not a mixed

15

issue of law and fact or an issue of fact.

16

1.

Whether the four-year limitations period set forth

17

in CAL. CODE CIV. P. § 337 applies to claims based on a written

18

contract, and whether that limitations period is applicable to

19

GE’s contract claims.

20

2.

Whether the two-year limitations period set forth

21

in Cal. Code Civ. P. § 339 applies to claims based on an

22

obligation other than in writing—including claims based on

23

obligations created by California law or statute—and whether that

24
25
26
27
28

3
GE objects to Wilkins’ and MHI’s wholesale
incorporation of their answers and counterclaims into this
section as it is antithetical to the purpose of a joint
statement, and does not assist the Court in defining the material
issues. Mr. Wilkins believes this statement is required in order
to protect his interests.
27

1

limitations period applies to GE’s non-contract claims—including

2

GE’s claims based on alleged obligations created by California

3

law or statute.

4

3.

Whether Mr. Wilkins’ alleged obligations to GE

5

were divisible obligations subject to the “continuing duty” or

6

“serial breach” doctrines, and whether these doctrines apply to

7

GE’s claims.

8

4.

9
10
11

Whether, under U.S. Patent Law, a U.S. patent

issues automatically to any non-assigning inventor as a co-owner,
and whether this principle applies to GE’s claims.
5.

Whether a patent co-owner lacks standing to bring

12

a suit for patent infringement, absent the cooperation and

13

joinder of all other patent co-owners, and whether this principle

14

applies to GE’s claims.

15

6.

Whether as a co-owner, Mr. Wilkins has no

16

obligations to GE and at his option can license his rights in the

17

’985 patent to Mitsubishi.

18

7.

Wilkins and Mitsubishi filed answers and

19

counterclaims on March 29, 2011.

20

pleadings to determine what legal issues may be involved.

21
22
23
24
25
26
27
28

8.

GE is still reviewing those

Whether GE’s claims against Mr. Wilkins are barred

by the applicable statutes of limitation.
9.

Whether GE’s claims against Mr. Wilkins are barred

by estoppel, waiver, laches, acquiescence, and/or consent.
10.

Whether GE’s claims against Mr. Wilkins are barred

by unclean hands.
11.

Whether GE lacks standing to assert the claims

against Mr. Wilkins stated in the Amended Complaint.
28

1
2

12.

Whether GE’s claims against Mr. Wilkins are barred

by the statute of frauds.

3

13.

Whether any and all actions or omissions by

4

Mr. Wilkins are or were privileged and/or justified and/or

5

excused by the conduct or omissions by GE, barring any claims by

6

GE.

7

14.

Whether GE’s claims against Mr. Wilkins are barred

8

by the statutory and common law prohibition on enforcement of

9

unconscionable contracts.

10

15.

Whether GE’s alleged contracts violated state law,

11

and whether those alleged contracts are therefore illegal and

12

unenforceable.

13
14
15
16
17
18
19

16.

Whether each Plaintiff purports to have an

adequate remedy at law, barring any equitable relief.
17.

Whether Mr. Wilkins entered into any agreement to

assign his inventions to Enron or GE.
18.

Whether Mr. Wilkins was obligated under any

contract to assign his invention rights to GE or Enron.
19.

Whether Mr. Wilkins was “obligated under

20

California law to assign to Enron intellectual property developed

21

during the course of his employment with Enron.”

22

Docket No. 76 ¶ 14.)

23

20.

(Quote from

Whether GE “stepped into the shoes of Enron with

24

respect to Wilkins’s [alleged] obligations concerning ownership

25

and assignment of intellectual property.”

26

No. 76 ¶ 15.)

27

the C&I Agreement.”

28

21.

(Quote from Docket

Nor was “GE . . . assigned Enron’s rights under
(Quote from Docket No. 76 ¶ 90.)

Whether Mr. Wilkins was “obligated under
29

1

California law to assign to GE intellectual property developed

2

during the course of his employment with GE.”

3

No. 76 ¶ 16.)

4

22.

(Quote from Docket

Whether Mr. Wilkins was “obligated under the

5

[alleged] C&I Agreement, the [alleged] EIPI Agreement, and[/or]

6

California law to assign to GE any interest he may have in the

7

’565 patent and the invention covered by the ’565 patent.”

8

(Quote from Docket No. 76 ¶ 18.)

9

23.

Whether Mr. Wilkins repudiated and denied his

10

alleged obligation to assign to GE intellectual property rights

11

for any inventions made during his work with Enron and GE, when

12

he refused to assign the rights in his inventions in 2004,

13

contrary to GE’s assertions in paragraph 20 of GE’s amended

14

complaint (Docket No. 76).

15

24.

Whether Mr. Wilkins was “obligated under the

16

[alleged] C&I Agreement, the [alleged] EIPI Agreement, and[/or]

17

California law to assign to GE any interest he may have in the

18

’985 patent and the invention covered by the ’985 patent.”

19

(Quote from Docket No. 76 ¶ 25.)

20

25.

Whether Mr. Wilkins has “wrongfully placed a cloud

21

on the ownership and title of the ’565 patent” or the ’985

22

patent.

23

(Quote from Docket No. 76 ¶¶ 29, 30.)
26.

Whether Mr. Wilkins has violated any “agreements

24

to assign to GE intellectual property developed in the course of

25

his employment with Enron and GE” or any “obligations arising

26

under California law.”

27

27.

28

(Quote from Docket No. 76 ¶ 31.)

Whether Mr. Wilkins agreed that Enron and/or GE

owns, or agreed to assign to Enron or GE, the rights in his
30

1

inventions, including his rights in the inventions of the ’565

2

patent and the ’985 patent.

3
4

28.

Whether Mr. Wilkins appointed any officer of Enron

or GE as his attorney-in-fact for any purpose.

5

29.

Whether Mr. Wilkins was “constrained from

6

licensing the ’985 patent and/or the invention covered by the

7

’985 patent to third parties.”

8

46.)

9

30.

(Quote from Docket No. 76 ¶¶ 35,

Whether Mr. Wilkins owed or owes GE any

10

“obligations under the [alleged] C&I Agreement.”

11

Docket No. 76 ¶ 36, 63.)

12

31.

(Quote from

Whether GE could have brought suit against

13

Mr. Wilkins in 2004 when he refused to assign his inventions to

14

GE.

15

32.

Whether GE also could have brought suit against

16

Mr. Wilkins in 2005, when the ’565 patent allegedly issued to

17

Mr. Wilkins as a co-owner.

18

33.

Whether Mr. Wilkins owed GE any “obligations under

19

the [alleged] EIPI Agreement.”

20

74).

21

34.

(Quote from Docket No. 76 ¶ 47,

Whether Mr. Wilkins is required “pursuant to

22

California law . . . to assign to GE any interest he claims to

23

have in the ’985 patent [or] to the invention covered by the ’985

24

patent.”

25
26
27
28

(Quote from Docket No. 76 ¶ 57.)
35.

Whether CAL. LAB . CODE § 2860 is inapplicable to the

inventions of an employee.
36.

Whether CAL. LAB . CODE § 2860 and the “work-for-

hire” doctrine do not apply when an employee expressly refuses to
31

1

sign a written agreement to assign the rights in his inventions,

2

and an employer accedes to the employment relationship despite

3

that refusal.

4

37.

Whether Mr. Wilkins is required “pursuant to

5

California law . . . to assign to GE any interest he claims to

6

have in the ’565 patent [or] to the invention covered by the ’565

7

patent.”

8
9

(Quote from Docket No. 76 ¶ 84.)
38.

Whether Mr. Wilkins was or is “constrained under

California law from [licensing] the ’565 patent and/or the

10

invention covered by the ’565 patent to third parties.”

11

from Docket No. 76 ¶ 84.)

12

39.

(Quote

Whether Mr. Wilkins “agreed that GE owns any

13

invention made by Wilkins during the course of his employment at

14

Enron [or] that Wilkins was required to assign to GE any interest

15

he might otherwise claim to have in such inventions.”

16

from Docket No. 76 ¶ 95.)

17

40.

(Quote

Whether Mr. Wilkins was or is “required to assign

18

to GE any interest he claimed to have in any invention made by

19

Wilkins during the course of his employment at GE.”

20

Docket No. 76 ¶ 96.)

21

41.

(Quote from

Whether Mr. Wilkins was or is required “pursuant

22

to California law . . . to assign to GE any interest he claimed

23

to have in any invention made by Wilkins during the course of his

24

employment at Enron and GE.”

25

42.

(Quote from Docket No. 76 ¶ 97.)

Whether CAL. LAB . CODE § 2860 and the common law

26

“work-for-hire” doctrine do not apply retroactively to divest an

27

employee of inventions he conceived of before his employment with

28

an employer began.
32

1
2

43.

44.

doctrines, including laches, estoppel, and unclean hands.

5
6

Whether GE’s claims are barred by equitable

seeks.

3
4

Whether GE is entitled to any relief that it

45.

Whether the ’985 patent should be corrected

pursuant to 35 U.S.C. § 256 to add Mr. Wilkins as a co-inventor.

7

46.

Whether Mr. Wilkins and Mitsubishi are entitled to

8

a declaration that (a) Mr. Wilkins is a rightful co-owner of the

9

’985 patent and still owns his ideas described in the ’985

10

patent, and (b) Mr. Wilkins has no obligation to assign his

11

rights in the ’985 patent, or his ideas described in the ’985

12

patent, to GE.

13

47.

Whether Mr. Wilkins is entitled to a declaration

14

that (a) Mr. Wilkins is a rightful co-owner of the ’565 patent

15

and still owns his ideas described in the ’565 patent, and (b)

16

Mr. Wilkins has no obligation to assign his rights in the ’565

17

patent, or his ideas described in the ’565 patent, to GE.

18

48.

Whether Mr. Wilkins is entitled to compensatory

19

and punitive damages for GE’s conversion of his ownership

20

interests in the ’565 patent and the ’985 patent in an amount to

21

be determined.

22

49.

Whether Mr. Wilkins is entitled to damages for

23

GE’s unjust retention of substantial benefits at the expense of

24

Mr. Wilkins’ ownership interests in the ’565 patent and the ’985

25

patent in an amount to be determined.

26

VII. Consent to Magistrate Judge Jurisdiction.

27
28

1.

The parties have not consented to transfer the

case to the Magistrate Judge for all purposes, including trial.
33

1

VIII.

2

Corporate Identification Statement.

1.

Any nongovernmental corporate party to any action in

3

this court shall file a statement identifying all its parent

4

corporations and listing any entity that owns 10% or more of the

5

party's equity securities.

6

its initial pleading filed in this court and shall supplement the

7

statement within a reasonable time of any change in the

8

information.

9

IX.

A party shall file the statement with

Status of All Matters Which are Presently Set Before the

10

Court.

11

1.

Currently pending before the Court are: (1) GE’s motion

12

for a preliminary injunction (Docket No. 15); (2) GE’s motion for

13

discovery sanctions (Docket No. 97) and (3) GE’s application for

14

contempt against Wilkins (Docket No. 90).

15

motion for a preliminary injunction was held on October 18,

16

2010.4

17

on January 24, 2011, and the motion was denied from the bench.

18

No other matters are presently set before the Court.

19

GE will notify the Court and all parties by Monday, April 11,

20

2011 about the status of their motion for contempt.

21
22
23
24
25
26
27
28

A hearing on GE’s

A hearing on GE’s motion for discovery sanctions was held

4

Plaintiff

The Court extended the party’s stipulated temporary
restraining order (“TRO”) (Docket No. 83) from the bench on
October 18, 2010, and indicated that the TRO would be converted
into a preliminary injunction after GE submitted proposed
findings of fact and conclusions of law and Mr. Wilkins submitted
comments on that proposal. Hrg. Tr. 73:3-10 (Oct. 18, 2010).
The parties filed their respective submissions on October 25 and
October 26. Docket Nos. 94, 95. The Court also decided to “give
Mitsubishi an opportunity to provide input on the appropriate
scope of the injunction Plaintiff is entitled to....” Docket No.
161 at 7. Mitsubishi filed its submission on February 18, 2011.
Docket No. 164.
34

1
2

X.

Discovery Plan and Cut-Off Date.
A.

Cut-off dates and proposed discovery schedules

3

1.

Mr. Wilkins and Mitsubishi believe that it may be

4

necessary to depose each of the witnesses identified in

5

Mr. Wilkins’ initial disclosures, as well as the dozens of

6

witnesses identified in GE’s and Mitsubishi’s initial

7

disclosures—several of whom are believed to reside in Germany.

8

GE notes that certain of those individuals have already been

9

deposed in the ITC action and GE is willing to enter into a

10

stipulation whereby those depositions (and trial testimony) would

11

not have to be re-taken in this matter.

12

2.

Mr. Wilkins’ and Mitsubishi’s responses to GE’s

13

Amended Complaint include various counterclaims requiring

14

additional, expanded discovery.

15

to correct inventorship of the ’985 patent pursuant to 35 U.S.C.

16

§ 256.

17

GE’s actions detrimental to Mr. Wilkins’ interests.

18

determination of inventorship and appropriate damages against GE,

19

as well as other issues in the case, may require expert

20

witnesses.

21

witness involvement will require additional time for discovery,

22

and the proposed discovery schedule, below, accounts for these

23

considerations.

24

For example, Mr. Wilkins seeks

Mr. Wilkins also has brought claims seeking damages for
The

Mr. Wilkins and Mitsubishi believe that such expert

3.

Mr. Wilkins and Mitsubishi anticipate needing to

25

obtain discovery of GE and Enron documents located in Germany;

26

and perhaps needing to take depositions of one or more of the

27

inventors named on the face of the ’985 patent—all of whom are

28

believed to reside in Germany.

It is well-recognized that
35

1

discovery in Germany under the Hague Convention is arduous

2

and time-consuming.

3

Litigation, 216 F.R.D. 395, 404 (E.D. Mich. 2003) (“No doubt

4

obtaining evidence under the Hague Convention is more difficult

5

and more expensive than obtaining discovery within the United

6

States.”); Doster v. Schenk, 141 F.R.D. 50, 54 (M.D.N.C. 1991)

7

(“It has been recognized that use of the Convention procedures in

8

Germany can involve considerable time and expense.”); see also

9

ABA Section of Antitrust Law, Obtaining Discovery Abroad, 127-155

10

(2d ed. 2005).

11

In re DaimlerChrysler AG Securities

these considerations.

12

B.

The proposed discovery schedule also accounts for

13

Proposed changes in the limits on discovery imposed by
Fed.R.Civ.P. 26(b); 30(a)(2)(A), (B) or (C); 30(d); or
33(a)

14

1.

Mr. Wilkins and Mitsubishi anticipate requiring

15

more than ten fact depositions per side, as GE has identified

16

many more than ten witnesses in its initial disclosures, and

17

Mitsubishi’s initial disclosures identify additional witnesses.

18

Mr. Wilkins requests that the Court at the conference initially

19

increase the number of oral depositions he may take to 25,

20

subject to his right to seek further depositions if an

21

appropriate showing is made.

22

2.

GE objects to increasing the number of depositions

23

to more than 10.

24

already deposed, and gave trial testimony, in the ITC action.

25

is willing to enter into a stipulation whereby those depositions

26

(and trial testimony) would not have to be re-taken in this

27

matter.

28

3.

GE believes that the relevant witnesses were

The Court has resolved the differences among the

GE

36

1

parties to expand the number of depositions which may be taken in

2

this case to 20 witnesses per side.

3

prejudice, the Court finds that this is a three-sided case.

4

side may take 20 depositions, including expert depositions within

5

the 20.

6

C.

7

At this time, without
Each

Need for a Protective Order
1.

The parties believe that the Court should issue a

8

Protective Order to protect the sensitive personal, financial,

9

and business information from broad disclosure.

GE has suggested

10

using standard protective order forms on the U.S. District Court

11

for the Northern District of California website.

12

Mitsubishi are reviewing those forms at this time.

13

D.

Mr. Wilkins and

Any Issues or Proposals Relating to the Timing,
Sequencing, Phasing, or Scheduling of Discovery

14
15
16

1.

Service of Documents and Delivery of

Correspondence:

17

2.

The parties agree to serve all documents and

18

transmit all correspondence between counsel via e-mail, without

19

confirmation copies, and service by e-mail shall be treated as

20

service by hand if sent before 5:00 PM (California time) (except

21

for exceptionally large documents that may exceed customary

22

Internet firewall limits, which shall be served by overnight

23

courier).

24

designate an e-mail alias that the opposing party shall use for

25

the delivery of all correspondence.

26

affect documents that are filed with the Court via ECF.

27

///

28

///

The parties propose that counsel for each party may

37

This agreement does not

1

E.

Whether the Parties Anticipate the Need to Take
Discovery Outside the United States

2
1.

As previously noted, testimony, documents, and/or

3
other discovery from sources in Germany may prove necessary.
4
Additionally, Mr. Wilkins’ work with Enron and GE took him to
5
Germany on two occasions.

The records of that work, and also the

6
communication that Mr. Wilkins had with German employees of Enron
7
and GE, may be located in Germany.

Mr. Wilkins and Mitsubishi

8
believe that Mr. Wilkins is entitled to discovery of that
9
information.
10
F.

Video and/or Sound Recording of Depositions

11
1.

The parties expect that video and sound recording

12
of depositions may be required.
13
14

G.

Discovery Relating to Electronic, Digital and/or
Magnetic Data

15

1.

Mr. Wilkins has notified GE that he will seek to

16

discover all relevant computer-based information and

17

electronically stored information (“ESI”) in its possession, such

18

as, for example, documents, slide presentations, and email

19

communications.

20

necessary.

21

information would be premature at this time, because the parties

22

have not been able to confer sufficiently on that subject.

23

Mr. Wilkins and Mitsubishi will work with GE to develop such a

24

discovery plan.

25

Mitsubishi agrees that such discovery will be

A detailed plan for the discovery of computer-based

2.

Mr. Wilkins has specifically notified GE of his

26

intention to seek discovery of certain electronic materials

27

received by GE from Enron, including such materials stored

28

outside of the United States.

At the Rule 26(f) Conference,
38

1

counsel for GE stated that he believed such materials—in the form

2

of emails—had already been collected for production.

3

Mr. Wilkins’ counsel responded by noting that during over three

4

years of litigation with Mitsubishi, GE has consistently refused

5

to collect and produce such materials.

6

requested that GE work diligently to resolve the issue of the

7

Enron-GE electronic materials given the particularly abbreviated

8

period for discovery likely to be permitted in this case.

9

3.

However,

Mr. Wilkins’ counsel

GE states that electronic documents have been

10

collected for production, and were part of the ITC production.

11

Mr. Wilkins’ counsel’s statement that “GE has consistently

12

refused to collect and produce such materials” is inaccurate.

13

will meet and confer with Mr. Wilkins’ or Mitsubishi’s counsel if

14

any dispute arises in this action.

15
16
17
18

4.

GE

The parties are presently unaware of any

information deleted after this suit began.
H.

Overall Case Schedule.
1.

Mid-discovery status conference shall be held July

19

14, 2011 at 8:15 a.m. in Courtroom 3.

20

telephonically.

21
22
23

2.

The parties may appear

The parties are ordered to complete all non-expert

discovery on or before November 23, 2011.
3.

The parties are directed to disclose all expert

24

witnesses, in writing, on or before December 14, 2011.

Any

25

rebuttal or supplemental expert disclosures will be made on or

26

before January 13, 2012.

27

provisions of Federal Rule of Civil Procedure 26(a)(2) regarding

28

their expert designations.

The parties will comply with the

Local Rule 16-240(a) notwithstanding,
39

1

the written designation of experts shall be made pursuant to F.

2

R. Civ. P. Rule 26(a)(2), (A) and (B) and shall include all

3

information required thereunder.

4

compliance with this order may result in the Court excluding the

5

testimony or other evidence offered through such experts that are

6

not disclosed pursuant to this order.

7
8

4.

Failure to designate experts in

The parties are ordered to complete all discovery,

including experts, on or before February 29, 2012.

9

5.

The provisions of F. R. Civ. P. 26(b)(4) shall

10

apply to all discovery relating to experts and their opinions.

11

Experts shall be fully prepared to be examined on all subjects

12

and opinions included in the designation and their reports, which

13

shall include every opinion to be rendered and all reasons for

14

each opinion.

15

sanctions.

16

XI.

17

Failure to comply will result in the imposition of

Pre-Trial Motion Schedule.
1.

All Non-Dispositive Pre-Trial Motions relating to fact

18

discovery, including any discovery motions, shall be filed on or

19

before December 5, 2011, and heard on January 9, 2012, at 9:00

20

a.m. before Magistrate Judge Jennifer L. Thurston.

21

request that the motions be heard in Fresno.

22

2.

The parties

All Non-Dispositive Pre-Trial Motions regarding expert

23

discovery shall be filed on or before February 1, 2012, and heard

24

on March 5, 2012, at 9:00 a.m. before Magistrate Judge Jennifer

25

L. Thurston.

26

heard in Fresno.

27
28

3.

The parties also request that these motions be

In scheduling such motions, the Magistrate

Judge may grant applications for an order shortening time
40

1

pursuant to Local Rule 142(d).

2

obtain an order shortening time, the notice of motion must comply

3

with Local Rule 251 and this schedule.

4

4.

However, if counsel does not

All Dispositive Pre-Trial Motions are to be

5

filed no later than February 8, 2012, and will be heard on April

6

2, 2012, at 10:00 a.m. before the Honorable Oliver W. Wanger, in

7

Courtroom 3, 7th Floor.

8

shall comply with Local Rule 230.

9

XII. Pre-Trial Conference Date.

10
11

1.

May 7, 2012, at 11:00 a.m. in Courtroom 3, 7th Floor,

before the Honorable Oliver W. Wanger.

12
13

In scheduling such motions, counsel

2.

The parties are ordered to file a Joint Pre-

Trial Statement pursuant to Local Rule 281(a)(2).

14

3.

Counsel's attention is directed to Rules 281

15

and 282 of the Local Rules of Practice for the Eastern District

16

of California, as to the obligations of counsel in preparing for

17

the pre-trial conference.

18

compliance with those rules.

19

XIII.

20

The Court insists upon strict

Motions - Hard Copy.

1.

The parties shall submit one (1) courtesy paper copy to

21

the Court of any motions filed.

22

protruding numbered or lettered tabs so that the Court can easily

23

identify such exhibits.

24

XIV.

25

Exhibits shall be marked with

Trial Date.
1.

June 19, 2012, at the hour of 9:00 a.m. in Courtroom 3,

26

7th Floor, before the Honorable Oliver W. Wanger, United States

27

District Judge.

28

2.

This is a jury trial.
41

1

3.

2

Counsels' Estimate Of Trial Time:
a.

3

4.

Ten days.

Counsels' attention is directed to Local Rules

4

of Practice for the Eastern District of California, Rule 285.

5

XV.

6

Settlement Conference.
1.

A Settlement Conference is scheduled for February 8,

7

2012, at 10:00 a.m. in Bakersfield or Fresno, at the option of

8

the Honorable Jennifer L. Thurston, United States Magistrate

9

Judge, and the parties.

10

2.

Unless otherwise permitted in advance by the

11

Court, the attorneys who will try the case shall appear at the

12

Settlement Conference with the parties and the person or persons

13

having full authority to negotiate and settle the case on any

14

terms at the conference.

15

3.

Permission for a party [not attorney] to attend

16

by telephone may be granted upon request, by letter, with a copy

17

to the other parties, if the party [not attorney] lives and works

18

outside the Eastern District of California, and attendance in

19

person would constitute a hardship.

20

allowed, the party must be immediately available throughout the

21

conference until excused regardless of time zone differences.

22

Any other special arrangements desired in cases where settlement

23

authority rests with a governing body, shall also be proposed in

24

advance by letter copied to all other parties.

25

4.

If telephone attendance is

Confidential Settlement Conference Statement.

26

At least five (5) days prior to the Settlement Conference the

27

parties shall submit, directly to the Magistrate Judge's

28

chambers, a confidential settlement conference statement.
42

The

1

statement should not be filed with the Clerk of the Court nor

2

served on any other party.

3

marked "confidential" with the date and time of the Settlement

4

Conference indicated prominently thereon.

5

request the return of their statements if settlement is not

6

achieved and if such a request is not made the Court will dispose

7

of the statement.

8
9

5.

Counsel are urged to

The Confidential Settlement Conference

Statement shall include the following:

10
11

Each statement shall be clearly

a.

A brief statement of the facts of the

b.

A brief statement of the claims and

case.

12
13

defenses, i.e., statutory or other grounds upon which the claims

14

are founded; a forthright evaluation of the parties' likelihood

15

of prevailing on the claims and defenses; and a description of

16

the major issues in dispute.

17

c.

A summary of the proceedings to date.

18

d.

An estimate of the cost and time to be

19

expended for further discovery, pre-trial and trial.

20

e.

The relief sought.

21

f.

The parties' position on settlement,

22

including present demands and offers and a history of past

23

settlement discussions, offers and demands.

24

XVI. Request For Bifurcation, Appointment Of Special Master,

25

Or Other Techniques To Shorten Trial.

26
27
28

1.
XVII.
1.

None.
Related Matters Pending.
The ’985 patent, which GE has identified in its Amended
43

1

Complaint, is at issue in two pending proceedings that do not

2

involve Mr. Wilkins.

3

2.

In the first proceeding, In the Matter of Certain

4

Variable Speed Wind Turbines, U.S. Int’l Trade Comm’n Inv.

5

No. 337-TA-641, GE accused Mitsubishi of infringing claim 15 of

6

the ’985 patent and sought to exclude Mitsubishi’s wind turbines

7

from importation on that basis.

8

decision and the Court of Appeals heard arguments on GE’s appeal

9

on February 10, 2011, and an opinion is expected in the coming

GE appealed the Commission’s

10

months.

11

determined that GE was not entitled to the relief that it sought,

12

and of particular relevance to this case, the Commission and ITC

13

Administrative Law Judge Charneski also determined that

14

Mr. Wilkins is an inventor of the ’985 patent, with no obligation

15

to assign his rights to GE.

16

Mitsubishi’s interpretation of the ITC rulings as discussed in

17

the motion for preliminary injunction.

18

3.

Mr. Wilkins and Mitsubishi contend that the ITC

GE disputes Mr. Wilkins and

In the second proceeding, General Electric Co. v.

19

Mitsubishi Heavy Industries, Ltd., No. 2:09-cv-00229 (S.D. Tex.),

20

GE accused Mitsubishi of infringing the same patents that it

21

asserted at the ITC.

22

’985 patent is invalid, that GE’s claims under the ’985 patent

23

should be dismissed for lack of standing (because Mr. Wilkins—a

24

co-inventor and co-owner—never assigned his rights to GE and was

25

not joined to the suit), and that the ’985 patent is

26

unenforceable due to GE’s inequitable conduct in removing

27

Mr. Wilkins’ name from the patent application that issued as the

28

’985 patent.

In its answer, Mitsubishi pleaded that the

Id. at DE 5 ¶¶ 39, 45, 47-50.
44

The Southern

1

District of Texas case is currently stayed pending resolution of

2

the ITC Investigation.

3

4.

4

litigation.

5

XVIII.

The ‘565 patent is not at issue in any other

6

Compliance With Federal Procedure.

1.

The Court requires compliance with the Federal

7

Rules of Civil Procedure and the Local Rules of Practice for the

8

Eastern District of California.

9

efficient administration of this case, all counsel are directed

To aid the court in the

10

to familiarize themselves with the Federal Rules of Civil

11

Procedure and the Local Rules of Practice of the Eastern District

12

of California, and keep abreast of any amendments thereto.

13

XIX. Effect Of This Order.

14

1.

The foregoing order represents the best

15

estimate of the court and counsel as to the agenda most suitable

16

to bring this case to resolution.

17

specifically reserved for this case.

18

any time that the schedule outlined in this order cannot be met,

19

counsel are ordered to notify the court immediately of that fact

20

so that adjustments may be made, either by stipulation or by

21

subsequent scheduling conference.

22

2.

The trial date reserved is
If the parties determine at

Stipulations extending the deadlines contained

23

herein will not be considered unless they are accompanied by

24

affidavits or declarations, and where appropriate attached

25

exhibits, which establish good cause for granting the relief

26

requested.

27

///

28

///
45

1
2

3.

Failure to comply with this order may result in

the imposition of sanctions.

3
4

DATED:

April 19, 2011.

5
6

/s/ Oliver W. Wanger
Oliver W. Wanger
UNITED STATES DISTRICT COURT

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