General Electric Company, et al. v. Wilkins

Filing 38

STIPULATED TEMPORARY RESTRAINING ORDER AND SCHEDULING ORDER, signed by Judge Oliver W. Wanger on 7/30/2010. ( 30 Motion for TRO set 8/6/2010 and Motion for 15 Preliminary Injunction are VACATED. 26 Motion to dismiss remains on calendar 9/27/2010 at 10:00AM.) (Gaumnitz, R)

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GLYNN & FINLEY, LLP CLEMENT L. GLYNN, State Bar No. 57117 JONATHAN A. ELDREDGE, State Bar No. 238559 One Walnut Creek Center 100 Pringle Avenue, Suite, 500 Walnut Creek, CA 94596 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] [e-mail] KLARQUIST SPARKMAN, LLP JEFFREY S. LOVE, State Bar No. 195068 121 S.W. Salmon Street, Suite 1600 Portland, Oregon 97204-2988 Telephone: [phone] Facsimile: [phone] E-mail: [e-mail] Attorneys for Plaintiffs GENERAL ELECTRIC COMPANY AND GE WIND ENERGY, LLC UNITED STATES DISTRICT COURT EASTERN DISTRICT OF CALIFORNIA ) GENERAL ELECTRIC COMPANY, a New ) York corporation; and GE WIND ENERGY, ) LLC, a Delaware limited liability company, ) ) Plaintiffs, ) ) vs. ) ) THOMAS WILKINS, an individual, ) ) Defendant. ) ) Case No. CV 10-00674-OWW-JLT STIPULATED TEMPORARY RESTRAINING ORDER AND SCHEDULING ORDER

WHEREAS, on April 15, 2010, Plaintiffs General Electric Company and GE Wind Energy, LLC (collectively "GE") filed their unverified complaint against Defendant Thomas Wilkins ("Wilkins") for declaratory relief, breach of contract, injunctive relief and specific performance related to United States Patent Nos. 6,924,565 and 6,921,985 (the ",,565 and ,,985 Patents") (Docket No. 1); and

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/// WHEREAS, GE contends that it is the sole owner of the equitable and legal rights to the ,,565 and ,,985 Patents; and WHEREAS, Wilkins counsel, on behalf of Wilkins, contends that the International Trade Commission, in their opinion dated January 19, 2010, in the matter of Investigation No. 337-TA-641, at page 35, stated that "Wilkins is an unnamed inventor of claim 15 of the ,,985 patent, that GE has not provided any showing to the effect that Wilkins had an obligation to assign the patent to GE . . . . As an inventor, Wilkins does have an equitable interest that can be perfected to legal title . . .;" and WHEREAS, Wilkins counsel, on behalf of Wilkins, further contends that Thomas Alexander Wilkins, the man, is the primary inventor of, among other things, the technologies known as Ride Through for Wind Turbines, Low Voltage Ride Through For Wind Turbines, Power Factor Control For Wind Turbines, Reactive Power Control For Wind Turbines, and Continuous Reactive Power Control For Wind Turbines, and was the primary inventor of various other claims in the ,,985 and ,,565 patents. Wilkins claims to have inventorship rights in those inventions, which rights Wilkins claims have never been assigned to any entity, including GE; and WHEREAS, on July 9, 2010, GE filed a motion for a preliminary injunction to enjoin Wilkins from inter alia licensing the rights to the ,,565 and ,,985 Patents pending a trial on the merits (Docket No. 15); and WHEREAS, on July 15, 2010, Wilkins filed a motion to dismiss GEs complaint on statute of limitations grounds (Docket No. 26); and WHEREAS, on July 26, 2010, GE filed a motion for a temporary restraining order to enjoin Wilkins from inter alia licensing the rights to the ,,565 and ,,985 Patents pending

hearing on the motion for a preliminary injunction (Docket No. 30); and

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WHEREAS, Wilkins and GE neither admit nor deny anything herein or otherwise by means of agreeing to this stipulation, and Wilkins reserves the right to oppose GEs motion for a preliminary injunction, including the bond amount; /// WHEREAS, the parties stipulate and agree that: 1. 2. GEs motion for a temporary restraining order (Docket No. 30) is denied as moot; The hearing date for GEs motion for a preliminary injunction (Docket No. 15) is taken off calendar pending the hearing on Wilkins motion to dismiss; 3. The hearing date for Wilkins motion to dismiss (Docket No. 26) shall be set on a date agreeable to the Court at the earliest practicable opportunity, and the briefing 4. 5. 6. schedule shall be pursuant to the Local Rules; and The Court will set a hearing date and briefing schedule for GEs motion for a preliminary injunction at the hearing on Wilkins motion to dismiss. The parties request that the hearing on GEs motion for a preliminary injunction be set within 35 days of the hearing on Wilkins motion to dismiss. THEREFORE, the parties stipulate and agree that pending GEs hearing on the motion for a preliminary injunction that neither Wilkins, nor any person or entity acting in concert with Wilkins, shall: 1. Take any steps to license, purport to license, grant, or purport to grant, rights to third parties in GEs Patent Nos. 6,924,565 and 6,921,985 (the ",,565 and ,,985 Patents"); or 2. Modify or extend the license agreement with Mitsubishi Heavy Industries, Ltd. and/or related entities related to GEs ,,565 and ,,985 Patents; or 3. Engage in any conduct that would convey or tend to convey to third parties that Wilkins is licensing or will license any ownership interest in the ,,565 or ,,985 Patents; or

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4.

Represent on his website or otherwise, unless under oath in judicially required or requested testimony, that he believes he has an ownership interest in the ,,565 and ,,985 Patents, or that he believes he has the lawful right to license under the ,,565 and ,,985 Patents.

Wilkins, through his counsel, hereby asserts that these orders are, or could be, a significant suspension of Wilkins rights under the law. Dated: July 30, 2010 /s/ Jonathan A. Eldredge____ Jonathan A. Eldredge Attorney for Plaintiffs Dated: July 30, 2010 __/s/ Michael L. Schulte (as authorized 7/30/2010) Michael L. Schulte Attorney for Defendant PURSUANT TO THE STIPULATION OF THE PARTIES, the Court hereby ORDERS

1. 2.

GEs motion for a temporary restraining order (Docket No. 30) is denied as moot; The hearing date for GEs motion for a preliminary injunction (Docket No. 15) is taken off calendar pending the hearing on Wilkins motion to dismiss;

3.

The hearing date for Wilkins motion to dismiss (Docket No. 26) shall be on September 27, 2010 at 10:00AM.

4.

The briefing schedule on Wilkins motion to dismiss shall be pursuant to the Local Rules; and

5.

The Court will set a hearing date and briefing schedule for GEs motion for a preliminary injunction at the hearing on Wilkins motion to dismiss.

THE COURT FURTHER ORDERS that Wilkins (and all those acting in concert with him) be enjoined as follows pending GEs hearing on the motion for a preliminary injunction:

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DEAC_Signature-END:

1.

Taking any steps to license, purport to license, grant, or purport to grant, rights to third parties in GEs Patent Nos. 6,924,565 and 6,921,985 (the ",,565 and ,,985 Patents"); or

2.

Modifying or extending the license agreement with Mitsubishi Heavy Industries, Ltd. and/or related entities related to GEs ,,565 and ,,985 Patents; or

/// /// 3. Engaging in any conduct that would convey or tend to convey to third parties that Wilkins is licensing or will license any ownership interest in the ,,565 or ,,985 Patents; or 4. Representing on his website or otherwise, unless under oath in judicially required or requested testimony, that he believes he has an ownership interest in the ,,565 and ,,985 Patents, or that he believes he has the lawful right to license under the ,,565 and ,,985 Patents.

IT IS SO ORDERED. Dated:

July 30, 2010

/s/ Oliver W. Wanger
UNITED STATES DISTRICT JUDGE

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