Siemens Gamesa Renewable Energy A/S v. General Electric Co.

UNITED STATES DISTRICT COURT

DISTRICT OF MASSACHUSETTS

)

SIEMENS GAMESA )

RENEWABLE ENERGY A/S, )

)

Plaintiff, )

)

v. ) CIVIL ACTION

) NO. 21-10216-WGY

GENERAL ELECTRIC CO., )

)

Defendant. )

YOUNG, D.J. May 23, 2022

MEMORANDUM & ORDER

I. INTRODUCTION

This matter is before the Court pursuant to the Defendant

General Electric’s (“GE”) Motion for Reconsideration (the

“Motion for Reconsideration”), Def. GE’s Mot. Recons. Ct.’s Am.

Claim Construction Order (“Mot. Reconsideration”), ECF No. 307,

and its Motion for Clarification (the “Motion for

Clarification”), Def. GE’s Mot. Clarification Ct.’s April 4,

2022 Order (“Mot. Clarification”), ECF No. 310. Both motions

were filed in response to the Court’s April 4, 2022 Order. See

April 4, 2022 Order, ECF No. 306.

GE’s Motion for Reconsideration is hereby DENIED, and its

Motion for Clarification is ALLOWED.

II. PROCEDURAL HISTORY

Siemens Gamesa Renewable Energy A/S (“Siemens”) owns United

States Patent No. 9,279,413 (the “‘413 Patent”) and United

States Patent No. 8,575,776 (the “‘776 Patent”). First Am.

Compl. Patent Infringement & Jury Demand ¶¶ 1, 23, 32, ECF No.

95; see generally id. Ex. A, U.S. Patent No. 8,575,776 (“‘776

Patent”), ECF No. 95-1; id. Ex. B, U.S. Patent No. 9,279,413,

ECF No. 95-2.

Siemens sued GE for infringement of the ‘413 Patent and

‘776 Patent in the United States District Court for the Middle

District of Florida. Compl. Patent Infringement & Jury Demand,

ECF No. 1. The case was later transferred to this Court by

consent. February 4, 2021 Order, ECF No. 43.

This Court held a Markman hearing on September 16, 2021.

See generally Tr. Markman Hr’g, ECF No. 113. After oral

argument, this Court construed six terms and took one under

advisement. Id. 42:19-44:1. On October 28, 2021, this Court

issued a Markman Order construing the remaining term and

explaining its other constructions. See Siemens Gamesa

Renewable Energy A/S v. Gen. Elec. Co., No. CV 21-10216-WGY,

2021 WL 5040409 (D. Mass. Oct. 28, 2021).

Subsequently, the parties filed six separate motions for

summary judgment. GE filed three motions for summary judgment

against Siemens’s infringement claims: (1) one based on the lack

of an infringing act within the United States; and two based on

non-infringement of the claim terms of the (2) ‘413 Patent, and

the (3) ‘776 Patent. Def. GE’s Mot. Summ. J. Non-Infringement

Lack U.S. Act, ECF No. 148; Def. GE’s Mot. Summ. J. Non-

Infringement ‘776 Patent, ECF No. 157; Def. GE’s Mot. Summ. J.

Non-Infringement ‘413 Patent, ECF No. 169. Siemens filed two

motions: (1) to preclude GE from utilizing certain prior art

references; and (2) for summary judgment on counts V and VI of

GE’s counterclaims alleging inequitable conduct by Siemens. See

Pl.’s Mot. Summ. J. Certain References Do Not Constitute Prior

Art, ECF No. 146; Pl.’s Mot. Summ. J. No Inequitable Conduct,

ECF No. 141.

This Court held a hearing on March 24, 2022, and

tentatively denied all of the motions, but took the matter under

advisement. See Electronic Clerk’s Notes, ECF No. 303. On

March 30, 2022, at the final pre-trial conference for this

matter, this Court denied the six summary judgment motions and

announced clarifications for two claim terms; the Court also

confirmed it would issue a formal order on the record

memorializing each of these actions. See Electronic Clerk’s

Notes, ECF No. 305. On April 4, 2022, the Court issued an order

(the “April 4, 2022 Order”) recording the denial of the motions

and its Markman clarifications for two of the claim terms of the

‘776 Patent: “a circular inner base structure” and “hollow

chamber.” See April 4, 2022 Order 2-3.

On April 13, 2022, GE filed a Motion for Reconsideration,

asking this Court to retract its explanations for each

construction provided in its April 4, 2022 Order. See generally

Mot. Reconsideration. GE also filed a Motion for Clarification

on the basis for the denial of its summary judgment motion for

lack of an infringing act within the United States. See Mot.

Clarification 2. The parties fully briefed each of these

motions. See Mem. Supp. Def. GE’s Mot. Recons. Ct.’s Am. Claim

Construction Order (“Mem. Supp. Mot. Reconsideration”), ECF No.

308; Pl. SGRE’s Opp’n Def. GE’s Mot. Recons. Ct.’s April 4, 2022

Order Clarifying Claim Construction (“Mem. Opp’n Mot.

Reconsideration”), ECF No. 315; Pl. SGRE’s Opp’n Def.’s Mot.

Clarification Ct.’s April 4, 2022 Order (“Siemens’s Opp’n Mot.

Clarification”), ECF No. 316.

After consideration of the parties’ submissions, GE’s

Motion for Reconsideration is DENIED and its Motion for

Clarification is ALLOWED as set forth below.

III. MOTION FOR RECONSIDERATION

GE requests relief from the order pursuant to Federal Rule

of Civil Procedure 60(b) (“Rule 60(b)”), citing specifically

sub-sections (1) and (6). Mem. Supp. Mot. Reconsideration 3.

Rule 60(b) allows courts to correct orders sua sponte or on

motion to remedy “mistake, inadvertence, surprise or excusable

neglect,” Fed. R. Civ. P. Rule 60(b)(1), and for “any other

reason that justifies relief,” id. 60(b)(6). Rule 60(b) is a

“vehicle for extraordinary relief,” which should be utilized

only under “extraordinary circumstances.” Davila-Alvarez v.

Escuela de Medicina Universidad Central del Caribe, 257 F.3d 58,

64 (1st Cir. 2001).

GE alleges that it is entitled to relief for two reasons:

(A) it was denied notice and opportunity to respond to the

Court’s newly adopted claim constructions; and (B) the Court’s

clarifications of the constructions are incorrect as matter of

law. Mem. Supp. Mot. Reconsideration 2-3. This memorandum

addresses each in turn and concludes that no extraordinary

circumstances warranting 60(b) reconsideration exists and,

accordingly, that GE’s motion is denied.

A. Notice and Opportunity to be Heard

GE contends that it had no notice that Siemens “was seeking

-- much less that the Court was considering adopting -- modified

constructions” until Siemens raised the issue at hearing, making

the Court’s April 4, 2022 Order a surprise. Mem. Supp. Mot.

Reconsideration 3-4. Furthermore, GE takes issue with the

characterization that “the parties suggested” that the two terms

in question “required further construction.” See id. (quoting

April 4, 2022 Order 2). This Court’s clarification of its

constructions is not a “surprise” meriting Rule 60(b) reversal

for the following reasons.

First, determining or clarifying claim scope is necessary

for resolving summary judgment motions and it is GE -- not

Siemens -- that moved for summary judgment on non-infringement

of the ‘776 Patent. Analysis of a motion for summary judgment

on infringement requires two steps: (1) if there is any dispute

as to the scope or meaning of a claim, it is resolved via a

Markman style analysis; and (2) after the scope of the claims is

set, “it is determined whether the accused product or system is

within the scope of the claim.” Vulcan Eng’g Co. v. Fata

Aluminium, Inc., 278 F.3d 1366, 1373 (Fed. Cir. 2002); see also

Markman v. Westview Instruments, Inc., 52 F.3d 967, 977–80 (Fed.

Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). Claim

construction, at step one, is matter of law for the Court to

determine. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1353 (Fed.

Cir. 1998). It is not just the Court’s power, but its duty to

engage in such an interpretation “[w]hen the parties raise an

actual dispute regarding the proper scope of these claims.” O2

Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,

1360 (Fed. Cir. 2008). In fact, “[a] motion for summary

judgment, at any stage in the proceedings, is an appropriate

vehicle [] for amending the claims construction.” Bateman v.

Por-Ta Target, Inc., No. C 01-5599 JL, 2004 U.S. Dist. LEXIS

28487, at *7 (N.D. Cal. July 28, 2004) (citing Markman, 52 F.3d

at 976). Furthermore, at the summary judgment stage, “[i]n the

event that claim construction is required, it will be done

without conducting a Markman hearing.” Meritor Transmission

Corp. v. Eaton Corp., No. 1:04CV178, 2006 U.S. Dist. LEXIS

108037, at *3-4 (W.D.N.C. Feb. 1, 2006).

Second, as discussed below, courts are at liberty to

clarify, amend, or update claim interpretation -- regardless

whether a party has moved for such revision -- if the Court

identifies such a need. A Markman Order “determining claim

construction . . . [is] provisional in the sense that it is

interlocutory.” Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc.,

997 F. Supp. 93, 95 (D. Mass. 1997) (Keeton, J.). Accordingly,

this Court “has discretion to review the claims construction at

any time before final adjudication” and “may review the claims

construction sua sponte.” Bateman, 2004 U.S. Dist. LEXIS 28487,

at *12-13. Indeed, “it is not necessary for the parties to file

a motion for reconsideration of a claim construction order,

[because] if the Court ‘is convinced it did err, it will amend

its claim construction.’” Id. at *13 (quoting ASM Am., Inc. v.

Genus, Inc., No. C-01-2190 EDL, 2003 U.S. Dist. LEXIS 7786, at

*6 (N.D. Cal. Jan. 10, 2003)). “District courts may [also]

engage in a rolling claim construction, in which the court

revisits and alters its interpretation of the claim terms as its

understanding of the technology evolves.” Jack Guttman, Inc. v.

Kopykake Enters., Inc., 302 F.3d 1352, 1361 (Fed. Cir. 2002);

see also Serono Inc. v. Ferring Pharms., Inc., No. C.A. 02-

11832-MLW, 2004 WL 5645756, at *1 (D. Mass. May 26, 2004) (Wolf,

J.) (highlighting that its claim constructions were subject to

change, in part, because the Markman hearing had been conducted

prior to any motion for summary judgment: “it is particularly

appropriate to note that the court’s interpretation of these

claims may evolve as the case progresses and the court is

educated further about or provided expert testimony on the

technology in question”); Open Text S.A. v. Box, Inc., No. 13-

cv-04910-JD, 2014 U.S. Dist. LEXIS 167021, at *9 (N.D. Cal. Dec.

1, 2014) (“To the extent that disputes later develop over the

scope of the claims -- or the constructions set forth in this

order -- it may become necessary for the Court to revise its

constructions, or to construe additional terms.”).

Therefore, it should come as no surprise to GE that this

Court clarified claim terms, as it is wont to do. See Guttman,

302 F.3d at 1361; see also Cytologix Corp. v. Ventana Med. Sys.,

424 F.3d 1168, 1172 (Fed. Cir. 2005) (explaining that “district

court[s] ha[ve] considerable latitude in determining when to

resolve issues of claim construction”). GE moved for summary

judgment on non-infringement, which placed the onus on this

Court further to clarify any terms relevant to the motion.

Furthermore, courts are free to further construe or clarify

claim terms when needed. The necessity of further clarification

here was highlighted by the motion for summary judgment

briefing; in particular, the discrepancies between (1) GE’s

description of the claim terms as compared to the Court’s

Markman constructions; and (2) GE’s interpretation of the

Court’s Markman constructions, as compared to Siemens’s.

As to the term “a circular inner base structure,” GE added

requirements to the Markman constructions, claiming that this

Court “rejected” the possibility that “disparate components . .

. arranged circumferentially” could constitute “a circular inner

base structure” in its Markman Order. Mem. Supp. Def. GE’s Mot.

Summ. J. Non-Infringement ‘776 Patent (“GE’s Mem. Non-

Infringement ‘776 Patent”) 4, ECF No. 158. At the Markman

hearing, however, this Court explicitly reserved this question

for a later date -- perhaps the summary judgment stage. Tr.

Markman Hr’g 33:22-34:3 (refusing to decide whether a single

continuous component was required at the Markman stage and

stating “[w]hether I can be crowded into a ruling on summary

judgment [on this issue] is unclear”). Furthermore, this

interpretation stands in stark contrast to Siemens’s reading,

which asserts the term did not require a “single continuous

piece.” SGRE’s Opp’n GE’s Mot. Summ. J. Non-Infringement ‘776

Patent (“Siemens’s Opp’n Non-Infringement ‘776 Patent”) 5, ECF

No. 186.

As to the term “hollow chamber,” GE argues that under the

Court’s construction a chamber cannot be considered “hollow” if

it contains structural supports. GE’s Mem. Non-Infringement

‘776 Patent 7. This Court, however, never outlined such a

requirement and rather accepted the construction agreed upon by

both parties -- “empty space.” See Siemens, 2021 WL 5040409, at

*11. This also stands in contrast to Siemens’s interpretation,

which outlined that an “empty space” or “hollow chamber” need

not be “a completely empty space” to meet the claim

construction. Siemens’s Opp’n Non-Infringement ‘776 Patent 12.

Both GE’s misinterpretation of this Court’s constructions

at the Markman stage, and the parties’ continuing disagreement

about the meaning of the terms during their summary judgment

briefing, highlighted conflicts in construction in need of

resolution. The Court’s April 4, 2022 Order has not altered its

original constructions; it has simply clarified them. See

generally April 4, 2022 Order. While it is true that the

Federal Circuit has discouraged “hypertechnical refinements of

the meaning of claims following claim construction to support a

grant of summary judgment,” Apple, Inc. v. Samsung Elecs. Co.,

No. 12-CV-00630-LHK, 2014 U.S. Dist. LEXIS 8157, at *68-69 (N.D.

Cal. Jan. 21, 2014) (emphasis added) (citing AFG Industries,

Inc. v. Cardinal IG Co., 375 F.3d 1367 (Fed. Cir. 2004)), this

Court has denied summary judgment, and only refined the terms to

the extent necessary.

GE argues it is entitled to notice and opportunity to

respond to these clarified claim constructions, particularly

because they were not proposed by either party. Mem. Supp. Mot.

Reconsideration 3-5.

Contrary to GE’s suggestion that further briefing or

hearing is required before this Court makes revisions, see Mem.

Supp. Mot. Reconsideration 4, “Markman does not require a

district court to follow any particular procedure in conducting

claim construction” or to hold a hearing, Ballard Med. Prods. v.

Allegiance Healthcare Corp., 268 F.3d 1352, 1358 (Fed. Cir.

2001). Furthermore, the central case to which GE cites for this

proposition, Qualcomm Inc. v. Intel Corp., not only involved a

change in construction by the United States Patent Office rather

than a court, but also concerned a change in construction that

was “difficult to imagine either party [would] anticipate.” 6

F.4th 1256, 1263 (Fed. Cir. 2021). In contrast, the terms at

issue here have been disputed and briefed extensively at both

the Markman and summary judgment stages of this case.1 Where an

1 See Siemens, 2021 WL 5040409, at *8-9, *11-12; Def. GE’s

Claim Construction Br. 6-8, 10-12, ECF No. 90; SGRE’s Opening

Claim Construction Br. 16-17, 19-20, ECF No. 91; SGRE’s

Responsive Claim Construction Br. 4-7, 9-11, ECF No. 99; Def.

issue relevant to a term’s construction has been a constant

point of contention during proceedings, the parties are on

notice that the court may decide the issue in its constructions

or clarifications. See Intellectual Ventures II LLC v. Ericsson

Inc., 686 F. App’x 900, 906 (Fed. Cir. 2017) (holding that a

party’s due process rights had not been violated where there was

a “continuous focus on . . . [the claim term] . . . before and

during oral arguments”). This Court even mentioned at least one

of these clarifications was possible at the Markman hearing.

Tr. Markman Hr’g 35:13-19; see also TQ Delta, LLC v. DISH

Network LLC, 929 F.3d 1350, 1355-56 (Fed. Cir. 2019) (explaining

that a party was on notice, because the Patent Board had

revealed its understanding of term before its decision).

Finally, the fact that the Court’s clarifications were not

proposed by either party is of no consequence; a court “may

adopt a definition not proposed by either party that best fits

with the claim language and specification.” Homeland

Housewares, LLC v. Whirlpool Corp., 865 F.3d 1372, 1376 (Fed.

Cir. 2017); Praxair Distr., Inc. v. Mallinckrodt Hosp. Prod. IP

Ltd., 890 F.3d 1024, 1034 (Fed. Cir. 2018) (concluding the

United States Patent Office could adopt a construction that

GE’s Resp. SGRE’s Opening Claim Construction Br. 15-16, 19-20,

ECF No. 100; GE’s Mem. Non-Infringement ‘776 Patent 3-12;

Siemens’s Opp’n Non-Infringement ‘776 Patent 5-13.

neither party proposed); Shire LLC v. Amneal Pharm., LLC, Civil

Action No. 11-3781 (SRC), 2013 U.S. Dist. LEXIS 111773, at *30

(D.N.J. Aug. 8, 2013) (rejecting both parties’ constructions).

B. GE’s Argument that the Clarifications are Incorrect as

Matter of Law

This Court’s order clarified the definition of “a circular

inner base structure” as:

“a circular inner base structure” need not be, but may be,

constituted by one continuous piece.

See April 4, 2022 Order 2-3. It also further clarified the

meaning of “hollow chamber” or “empty space” as:

a “hollow chamber” or “empty space,” is “hollow” or “empty”

as long as at least some part of it is continuously empty

or hollow (it need not be entirely empty or hollow).

Id. GE challenges each as incorrect as a matter of law. The

Court rejects GE’s contentions.

1.

“a circular inner base structure”

GE claims that the Court’s construction of “a circular

inner base structure” is incorrect for four reasons: (a) it is

inconsistent with the plain language of the claim and definition

of the word “structure”; (b) it goes against the intrinsic

evidence of the ‘776 Patent; (c) the definition introduces a

negative limitation absent any express disclaimer or

lexicography; and (d) the modified construction would render the

patent invalid. Mem. Supp. Mot. Reconsideration 5-7. GE’s

arguments fail on all accounts.

a. The Plain Language & Definition

As to the first argument, GE claims that “[t]he claim term

‘inner base structure,’ by its use of the singular ‘structure’

describes one continuous piece, rather than multiple separate

pieces (‘structures,’ plural).” Id. 5. In other words, GE

argues that because the term “structure” is used in its singular

form in the claims, an “inner base structure” must be formed of

one continuous piece. This reading mistakes the plain language

of the claims. The singular use of structure suggests that: “A

wind turbine with a generator” is comprised of “a circular inner

base structure” among other components. ‘776 Patent col. 3, ll.

25-31. The singularity refers to the number of structures one

could define as “a circular inner base structure” in the “wind

turbine” of the ‘776 Patent. The use of the singular term

“structure,” however, does not describe what “a circular inner

base structure” must be comprised of. See id. col. 3, ll. 25-

35.

To the extent GE makes an argument regarding the dictionary

definition of “structure,” the evidence also weighs against it

in that regard. In deciphering the plain meaning of claim

terms, the Federal Circuit sometimes starts from a term’s

dictionary definition. See In re Stoller, 598 F. App’x 772, 774

(Fed. Cir. 2015). Courts can consider extrinsic evidence, such

as the dictionary definition of terms, Markman, 52 F.3d at 980,

“if needed to assist in determining the meaning or scope of

technical terms in the claims,” Pall Corp. v. Micron

Separations, Inc., 66 F.3d 1211, 1216 (Fed. Cir. 1995)

(citations omitted); see also Vitronics Corp. v. Conceptronic,

Inc., 90 F.3d 1576, 1584 n. 6 (Fed. Cir. 1996).

The dictionary definition of “structure” (in its singular

form) is “something made up of more or less interdependent

elements or parts: something having a definite or fixed pattern

of organization.” Webster’s Third New Int’l Dictionary 2267

(Philip Babcock Gove ed., 3d ed. 2002). Other dictionaries are

in accord defining structure as: “Something made up of a number

of parts that are held or put together in a particular way”;

“Something constructed, such as a building.” Structure,

American Heritage Dictionary,

https://ahdictionary.com/word/search.html?q=structure (last

visited May 22, 2022). The term “structure” does not then

suggest that the inner base structure need be made up of one

continuous piece; rather, it describes a component comprised of

multiple discernable pieces.

Therefore, the Court’s clarification is consistent with the

plain language of the claim.

b. The Intrinsic Evidence

With regard to its second argument, GE cites to the

following portions of the specification in order to claim that

“a circular inner base structure” must be one continuous piece:

“an object of the present invention to provide a wind turbine

with a generator with a rigid stator support structure”; “[t]he

stator support structure of the inventive wind turbine with a

generator comprises a base structure which renders the base

structure particularly stable.” Mem. Supp. Mot. Reconsideration

5 (quoting ’776 Patent col. 1, ll. 37-39; id. col. 1, ll. 50-52)

(emphasis in added). GE argues these sections indicate that “a

discontinuous base structure is inconsistent with the invention

as described.” Id. 6.

This Court agrees that “the specification is always highly

relevant to the claim construction analysis.” Vitronics, 90

F.3d at 1582. Claim terms are indubitably intended to be read

according to “the meaning and scope with which they are used in

the specification.” Kinik Co. v. ITC, 362 F.3d 1359, 1365 (Fed.

Cir. 2004). The specification at issue here, however, if

anything, counsels against GE’s conclusion.

GE cited to one of the same portions of the specification

at the Markman stage in arguing that “a circular inner base

structure” must be “rigid.” See Siemens, 2021 WL 5040409, at *8

(quoting ‘776 Patent col. 1, ll. 36-38) (addressing GE’s

argument as to “rigid stator support structure”). As this Court

identified then, and reiterates now, “[t]here is no intrinsic or

extrinsic basis to conclude that” the terms “circular inner base

structure” and “stator support structure” are used

“synonymous[ly]” in the specification. Id. Furthermore, “[t] o

the extent that GE suggests that the circular inner base

structure is rigid” or particularly stable “because it is a

component of the stator support structure, the record is at best

ambiguous on that point, and ‘[a]mbiguous language cannot

support’” such a requirement. Id. (quoting Poly-Am., L.P. v.

API Indus., Inc., 839 F.3d 1131, 1136 (Fed. Cir. 2016)).

Even were this Court to assume arguendo that the terms

“rigid” or “particularly stable” could be attributed to “a

circular inner base structure,” neither adjective is synonymous

with, or even implies, the existence of one continuous ring.

Being composed of multiple pieces and being stable or rigid are

not mutually exclusive concepts. Furthermore, GE fails to point

to any evidence in the specification to indicate that these

terms are synonymous or indicative of one another.

GE also claims the inner base structure is presented as a

single continuous piece in the embodiments, which entails it

must be continuous. Mem. Supp. Mot. Reconsideration 6. GE

cites to a portion of the specification, see Mem. Supp. Mot.

Reconsideration 5 (quoting ‘776 Patent col. 2, ll. 49-50), which

describes one of the ‘776 Patent’s embodiments as a “[s]tator

[which] comprises a base structure [] which is formed as a

circular ring,” ‘776 Patent col. 2, ll. 49-50. Not only has

this Court already rejected this position at the Markman stage,

Siemens, 2021 WL 5040409, at *10 (concluding that “formed as a

circular ring” does “not necessarily refer to the ‘inner base

structure’” (quoting ‘776 Patent col. 2, l. 50)), but GE also

misstates the standard as to embodiments. The Federal Circuit

has instructed that while courts “should not normally interpret

a claim term to exclude a preferred embodiment,” Primos, Inc. v.

Hunter’s Specialties, Inc., 451 F.3d 841, 848 (Fed. Cir. 2006),

embodiments should not be read to limit the scope of claim

terms, see SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d

870, 875 (Fed. Cir. 2004). In fact, the Federal Circuit has

held that trying to “import a preferred embodiment into the

claims” is “flawed.” Acumed LLC v. Stryker Corp., 483 F.3d 800,

805 (Fed. Cir. 2007). Reading “a circular inner base structure”

to be one continuous piece based on the embodiment would

improperly import an embodiment into a claim limitation.

Finally, the Federal Circuit has suggested that claims are

to be given “their broadest reasonable construction in light of

the specification.” Phillips v. AWH Corp., 415 F.3d 1303, 1316

(Fed. Cir. 2005) (internal quotation marks omitted). Importing

the claim limitation of “continuous” onto “a circular inner base

structure” would improperly narrow the term in a way that is

unsupported by any evidence.

c. Importing a Negative Claim Limitation

Next, GE argues “[t]he Court’s modified construction is

incorrect because it introduces a negative limitation into the

claim absent any express disclaimer or lexicography within the

‘776 [P]atent specification.”2 Mem. Supp. Mot. Reconsideration

6. GE suggests that the Court’s construction outlines what the

‘776 Patent’s “structure is not,” not what it is. Id. GE is

correct that a negative claim limitation speaks to what an

invention is not or what it excludes. Novartis Pharm. Corp. v.

Accord Healthcare, Inc., No. 2021-1070, 2022 U.S. App. LEXIS 58,

at *18 (Fed. Cir. Jan. 3, 2022). Where it fails is in its

reading of this Court’s clarifications -- which do not describe

what the ‘776 Patent excludes, but rather what it may include.

The Court stated in its clarifying order that “‘a circular

inner base structure’ need not be, but may be” continuous.

April 4, 2022 Order (emphasis added). A negative construction

would have been that the circular inner base structure “is not

2 Siemens argues that GE has waived this argument, because

it has consistently asserted that a “circular inner base

structure” needed to be one continuous piece, yet it never

stated that answering its question could introduce an improper

negative limitation in the claim. Mem. Opp’n Mot.

Reconsideration 5. The Court need not reach this question as it

resolves GE’s motion for reconsideration on other grounds.

continuous” or “is not constituted by separate components

arranged circumferentially.” The cases cited by GE indicate

that negative claim constructions describe what an invention

“cannot be,” “must not be,” or “excludes”; significantly,

negative constructions do not describe what an invention “need

not be,” “is not required to be,” or “may be.” See Mem. Supp.

Mot. Reconsideration 6 (citing Omega Eng’g, Inc., v. Raytek

Corp., 334 F.3d 1314, 1322 (Fed. Cir. 2003) (identifying a

construction that stated the invention could “not strike the

center or interior portion of the energy zone” as a negative

claim limitation); Eko Brands, LLC v. Adrian Rivera Maynez

Enters., Inc., 946 F.3d 1367, 1380–81 (Fed. Cir. 2020) (Reyna,

J., concurring) (“The district court also erred by interpreting

‘passageway’ to exclude a receptacle ‘that utilized a broad,

thin mesh.’” (emphasis added) (citations omitted)); Medicines

Co. v. Mylan, Inc., 853 F.3d 1296, 1308 (Fed. Cir. 2017) (“On

appeal, Medicines repeatedly criticizes the court’s negative

construction as failing to define what ‘efficient mixing’ is, as

opposed to what it is not.” (emphasis added)); Lenovo Holding

Co., Inc. v. DoDots Licensing Sols. LLC, No. 2021-1247, 2021 WL

5822248, at *2 (Fed. Cir. Dec. 8, 2021) (considering whether the

Board’s claim construction erred by stating what an invention

excluded).

Having ascertained that its clarification does not

constitute a negative claim construction, this Court need not

assess whether the appropriate conditions exist for a negative

claim construction of “a circular inner base structure” in the

‘776 Patent.

d. Invalidity

“Finally,” GE argues, “if the Court’s modified construction

were correct, all claims of the ‘776 [P]atent would be invalid

under the written description requirement of 35 U.S.C. §

112(a).” Mem. Supp. Mot. Reconsideration 6.3 “Patents are

presumed to be valid and overcoming this presumption requires

clear and convincing evidence.” Centocor Ortho Biotech, Inc. v.

Abbott Lab’ys, 636 F.3d 1341, 1347 (Fed. Cir. 2011). “Written

description is a statutory requirement set forth in 35 U.S.C. §

112. The written description requirement requires the inventor

to disclose the claimed invention so as to allow persons of

ordinary skill in the art to recognize that the inventor

invented what is claimed.” Billups-Rothenberg, Inc. v.

Associated Reg’l & Univ. Pathologists, Inc., 642 F.3d 1031, 1036

(Fed. Cir. 2011) (internal quotation marks omitted). “The test

. . . is whether the disclosure of the application as originally

3 Siemens also argues that GE waived this invalidity

argument. Mem. Opp’n Mot. Reconsideration 7. The Court need

not assess this, however, as it resolves this issue on other

grounds.

filed reasonably conveys to the artisan that the inventor had

possession at that time of the later claimed subject matter,

rather than the presence or absence of literal support in the

specification for the claim language.” In re Kaslow, 707 F.2d

1366, 1375 (Fed. Cir. 1983). “To satisfy the written

description requirement,” however, “the descriptions contained

in both applications need not be identical.” Pfizer Inc. v.

Perrigo Co., 933 F. Supp. 377, 381 (S.D.N.Y. 1996).

It simply “requires that the written description actually

or inherently disclose the claim element.” PowerOasis, Inc. v.

T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir. 2008). For

example, the Federal Circuit in Tronzo v. Biomet, Inc., held

that a claim was invalid, based on failure to disclose all of

the possible shapes of the invention literally or inherently.

156 F.3d 1154, 1159 (Fed. Cir. 1998). “The sufficiency of a

patent’s written description is ordinarily a question of fact,

but ‘[a] patent also can be held invalid [as matter of law] for

failure to meet the written-description requirement based solely

on the face of the patent specification.’” Abbott GmbH & Co.,

KG v. Centocor Ortho Biotech, Inc., 870 F. Supp. 2d 206, 232 (D.

Mass. 2012) (Saylor, J.) (quoting Centocor, 636 F.3d at 1347).

Nothing in the specification, embodiments, or claim

limitations indicates that there are violations of the written

description requirement. Furthermore, that a “‘circular inner

base structure,’ need not be, but may be, constituted by one

continuous piece,” April 4, 2022 Order 3, is “actually or

inherently disclose[d],” PowerOasis, 522 F.3d at 1306,

throughout the specification, which mentions “a circular inner

base structure” but nowhere requires continuity, see generally

‘776 Patent. Therefore, the Court’s ruling does not render the

patent invalid as matter of law solely based on the face of the

specification. Furthermore, GE has not adduced any evidence of

invalidity and only makes conclusory legal argument.

2.

“hollow chamber”

GE also alleges that the Court’s construction of “hollow

chamber” is inconsistent with the plain language of the claim

and the specification of the ‘776 Patent. Mem. Supp. Mot.

Reconsideration 7. Specifically, GE claims that “[t]he ‘hollow

chamber’ of the ’776 [P]atent is specifically identified by the

claim language as being formed between four specific claimed

structures: the ‘circular inner base structure,’ the ‘circular

outer base structure,’ and the ‘plurality of connection

structures.’” Id. (quoting ‘776 patent col. 3, l. 35; id. col.

4, l. 3). Essentially, GE argues that because the section

between these two structures is delineated as hollow or empty

that chamber or space must be completely hollow or empty. This

is an overly narrow reading of what the parties already agreed

to at the Markman stage -- “empty space.” See Siemens, 2021 WL

5040409, at *11.

GE misinterprets both the claim language and the Court’s

construction. In its April 4, 2022 Order, this Court simply

clarified what can be characterized as “hollow” or “empty” -- a

component of which at least some “part” is “continuously empty

or hollow.” See April 4, 2022 Order 3. This construction does

not alter or add any additional requirements. Rather, GE would

have had the Court add a requirement that the entire space be

“completely empty” in order to be considered hollow or empty.

IV. MOTION FOR CLARIFICATION

One of GE’s motions for summary judgment, was based on the

claim that no infringing activity has taken place within the

United States. See Mot. Summ. J. Non-infringement within U.S.

The Court denied this motion. See April 4, 2022 Order 2.

Subsequently, GE moved for clarification of the ruling, asking

whether the Court denied the motion for summary judgment: (1)

because there was dispute of material fact as to “whether an

infringing act ha[d] taken place within [twelve] nautical miles

of the coastline of the United States”; or (2) “because the

Court ha[d] concluded as [] matter of law that the reach of the

Patent Act extend[ed] beyond [twelve] nautical miles.” Mot.

Clarification 2. GE asserts that “[t]he basis for the Court’s

decision will affect how GE prepares its case for trial [and] .

. . whether the parties will need to propose jury instructions

on the issue of territoriality.” Id. Siemens opposes the

motion for clarification arguing that “[a]t this stage it does

not matter why” the Court denied GE’s motion for summary

judgment, because there is a genuine dispute of material fact

regarding whether the turbines will be located within twelve

nautical miles and that “at trial, [Siemens] intends to adduce

evidence demonstrating that the turbines may be installed within

the territorial sea.” Siemens’s Opp’n Mot. Clarification 1.

In the interest of providing clarity and facilitating

refinement of each party’s arguments for trial, this Court

grants the Motion for Clarification. While a genuine dispute of

material fact exists as to whether the wind turbines will be

located within twelve nautical miles of the United States

coastline, this Court holds that an act can be considered

“within the United States” for purposes of patent infringement,

see 35 U.S.C. § 271(a), if it involves the sale or offer to sell

something that will be “permanently or temporarily attached to

the seabed . . . for the purposes of exploring for, developing,

or producing energy resources, including non-mineral energy

resources” within 200 miles of the Unites States coast. 43

U.S.C. § 1333(a)(1)(iii).

Section 271(a) of Title 35 of the United States Code

provides that “whoever without any authority makes, uses, offers

to sell, or sells any patented invention, within the United

States . . . during the term of the patent therefor, infringes

the patent.” 35 U.S.C. § 271(a) (emphasis added); Microsoft

Corp. v. AT&T Corp., 550 U.S. 437, 441 (2007) (“It is the

general rule under United States patent law that no infringement

occurs when a patented product is made and sold in another

country.”). In denying the GE’s motion for summary judgment

this Court considered three main issues: (A) what constitutes a

sale or offer to sell; (B) what can be considered “within the

United States” for purposes of the statute; and (C) finally,

what disputes of material fact exist, regardless of this

definition.

A. Sales and Offers to Sell

“[A] contract between two [United States] companies for the

sale of the patented invention with delivery and performance in

the [United States] constitutes a sale under § 271(a) as . . .

matter of law.” Transocean Offshore Deepwater Drilling, Inc. v.

Maersk Contractors USA, Inc., 617 F.3d 1296, 1310 (Fed. Cir.

2010) (emphasis added). More specifically,

[T]he “selling” of an infringing article has both a

physical and a conceptual dimension to it. That is to

say, it is possible to define the situs of the tort of

infringement-by-sale either in real terms as including

the location of the seller and the buyer and perhaps

the points along the shipment route in between, or in

formal terms as the single point at which some legally

operative act took place, such as the place where the

sales transaction would be deemed to have occurred as

a matter of commercial law.

North Am. Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d

1576, 1579 (Fed. Cir. 1994) (emphasis added). Generally, the

Federal Circuit has considered the location of the transaction

of sale to be the place where performance takes place rather

than the place where legal title passes. See id.; see also

Litecubes, LLC v. N. Light Prod., Inc., 523 F.3d 1353, 1369

(Fed. Cir. 2008) (holding products shipped f.o.b., where legal

title transferred in Canada, were still sold “within the United

States” because that is where buyers were located).

“An offer to sell is a distinct act of infringement

separate from an actual sale. An offer to sell differs from a

sale in that an offer to sell need not be accepted to constitute

an act of infringement.” Transocean, 617 F.3d at 1308 (emphasis

added). Determining whether an offer to sell within the United

States has taken place requires looking to “the location of the

future sale” not the location of the offer. Id. at 1309

(emphasis added). For example, even if two United States-based

companies negotiate abroad for a contract that is to be

performed within the United States, the offer of sale can still

be considered to exist within the United States. Id. at 1310.

The converse is also true: if the negotiation of the sale takes

place in the United States but the sale happens outside of it,

no offer of sale has taken place within the United States. Halo

Elecs., Inc. v. Pulse Elecs., Inc., 831 F.3d 1369, 1380 (Fed.

Cir. 2016) (“Pulse did not directly infringe the Halo patents

under the ‘offer to sell’ provision by offering to sell in the

United States the products at issue, because the locations of

the contemplated sales were outside the United States.”).

Siemens’s asserts GE’s Haliade-X series offshore wind

turbines infringe several claims of the ‘776 and ‘413 Patents.

GE’s Statement Undisputed Fact Supp. Mot. Summ. J. Non-

Infringement ‘413 & ‘776 Lack U.S. Infringing Act (“GE’s Facts

U.S. Act”) ¶¶ 2-3, ECF No. 150; Pl.’s Resp. Def. GE’s Statement

Undisputed Fact Supp. Mot. Summ. J. Non-Infringement ‘413 & ‘776

Lack U.S. Infringing Act & Pl.’s Suppl. Facts (“Siemens’s Facts

U.S. Act”) ¶¶ 2-3, ECF No. 195. GE has been awarded contracts

to provide Haliade-X turbines off the coast of the United States

(the projects are called Vineyard Wind and Ocean Wind I), but

they have yet to perform the contracts. GE’s Facts U.S. Act ¶

8; Siemens’s Facts U.S. Act ¶ 8. Siemens alleges, and GE does

not rebut, that even if the projects are located outside the

United States territorial sea -- which spans twelve nautical

miles from the coastline -- the Haliade-X wind turbines will be

attached to the seabed within 200 nautical miles off the United

States coast. Siemens’s Facts U.S. Act ¶ 9.

Given this information, depending on what is considered

“within the United States,” both a sale and an offer to sell

could have taken place within the United States under the

meaning of the statute.

GE appears to argue that because installations of the wind

turbines have yet to occur, sales have not taken place. Reply

Mem. Supp. Def.’s Mot. Summ. J. Non-Infringement Lack U.S.

Infringing Act 3-4, ECF No. 209. This argument is meritless.

All that is needed is a contract for sale with performance in

the United States, see Transocean, 617 F.3d at 1310, which

exists here, see GE’s Facts U.S. Act ¶ 8; Siemens’s Facts U.S.

Act ¶ 8. Furthermore, even if the sales had not materialized

into contracts -- which they have -- offers for sale would have

existed regardless, given the negotiations that took place,

constituting a second basis for an infringing act.4

4 Siemens makes some vague and partially redacted references

to negotiations taking place in the United States. See

generally Siemens’s Facts U.S. Act. Even taking for granted

that such negotiations took place, they are not relevant to

whether an offer for sale occurred in the United States.

Transocean, 617 F.3d 1309.

Siemens also argues that GE “generated interest for sale in

the [United States].” Pl.’s Resp. Def. GE.’s Mot. Summ. J.

Non-Infringement Lack U.S. Infringing Act 14, ECF No. 191.

“[T]he meaning of ‘offer to sell’ is to be interpreted according

to its ordinary meaning in contract law, as revealed by

traditional sources of authority.” Rotec Indus., Inc. v.

Mitsubishi Corp., 215 F.3d 1246, 1255 (Fed. Cir. 2000).

Generating interest in the United States market therefore could

B. Within the United States

Section 100(c) of Title 35 of the United States Code

defines the term “United States” to include the “United States

of America, its territories and possessions.” 35 U.S.C. §

100(c). “[A] patent is a sovereign grant and has no force

beyond the territorial limits of sovereignty.” Hanover Star

Milling Co. v. Allen & Wheeler Co., 208 Fed. 513, 521 (7th Cir.

1913); see also Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235

U.S. 641, 650 (1915) (“The right conferred by a patent under our

law is confined to the United States and its territories.”

(citation omitted)); Voda v. Cordis Corp., 476 F.3d 887, 901

(Fed. Cir. 2007) (“A patent right is limited by the metes and

bounds of the jurisdictional territory that granted the right to

exclude.”).

Few cases have assessed what is territorially within the

United States for purposes of patent law, and those that have

deal primarily with the applicability of patent law to various

types of vessels. See, e.g., Brown v. Duchesne, 60 U.S. 183,

198 (1856) (holding that a foreign vessel legally in a United

be sufficient to constitute an offer of sale. See id. The

summary judgment record is underdeveloped on this point.

Nevertheless, the Court need not resolve this question, because

a basis for an offer to sell already exists elsewhere -- in GE’s

undisputed contract negotiations to install the Haliade-X off

the United States coastline.

States port was not subject to patent laws); Gardiner v. Howe, 9

F. Cas. 1157, 1158 (C.C.D. Mass. 1865) (“The patent laws of the

United States afford no protection to inventions beyond or

outside of the jurisdiction of the United States; but this

jurisdiction extends to the decks of American vessels on the

high seas, as much as it does to all the territory of the

country, and for many purposes is even more exclusive.”); M-I

Drilling Fluids UK Ltd. v. Dynamic Air Inc., 99 F. Supp. 3d 969,

978 (D. Minn. 2015) (holding that patent law applied to drilling

technology on United States-flagged ships on the high seas).

The United States exercises different sovereign rights and

territorial jurisdiction at different distances from its

coastline. “[T]he United States possesses complete sovereignty

over the territorial sea -- a belt of sea that extends no more

than [twelve] miles seaward of the baseline.” WesternGeco

L.L.C. v. Ion Geophysical Corp., 776 F. Supp. 2d 342, 365–67

(S.D. Tex. 2011) (emphasis added). “[T]he United States

possesses sovereign rights over the natural resources located in

the [C]ontinental [S]helf -- the seabed and subsoil of the

submarine areas that extend beyond its territorial seas.” Id.

The Outer Continental Shelf “is defined as including all

submerged land that is beyond the outer limits of state

jurisdiction (ordinarily three nautical miles from shore) and

within the limits of national jurisdiction (ordinarily 200 miles

from shore).” Amber Res. Co. v. United States, 538 F.3d 1358,

1362 (Fed. Cir. 2008) (citing 43 U.S.C. §§ 1331(a), 1332, 1301).

This begs the question of whether patent law extends to the

Outer Continental Shelf.

The Outer Continental Shelf, is governed by the Outer

Continental Shelf Lands Act (the “OCSLA”) which mandates that:

In general. -- The Constitution and laws and civil

and political jurisdiction of the United States are

extended, to the same extent as if the outer

Continental Shelf were an area of exclusive Federal

jurisdiction located within a State, to -- (i) the

subsoil and seabed of the outer Continental Shelf;

(ii) all artificial islands on the outer Continental

Shelf; (iii) installations and other devices

permanently or temporarily attached to the seabed,

which may be erected thereon for the purpose of

exploring for, developing, or producing resources,

including non-mineral energy resources; or (iv) any

such installation or other device (other than a ship

or vessel) for the purpose of transporting or

transmitting such resources.

43 U.S.C. § 1333(a)(1)(A). Several sources of evidence --

including the plain language and legislative history of the

OCSLA, the ambit of federal jurisdiction, and the sparse caselaw

that exists on this topic -- indicate that the OCSLA affects the

scope of what can be considered “within the United States,” for

patent law purposes under 35 U.S.C. § 271(a).

1.

Plain Language & Legislative History

“It is a well-established principle of statutory

construction that absent clear evidence of a contrary

legislative intention, a statute should be interpreted according

to its plain language.” United States v. Apfelbaum, 445 U.S.

115, 121 (1980). The language of the statute indicates that the

“laws . . . of the United States” apply to items affixed to the

Outer Continental Shelf for energy generation. 43 U.S.C. §

1333(a)(1)(A). Given that the laws of the United States

encompass federal patent laws, there is no reason why patent law

would not apply to the items covered by the OCSLA.

Furthermore, the legislative history of the act supports

this reading. The act was passed in 1978, “responding to

increasingly serious domestic energy problems.” False Pass v.

Watt, 565 F. Supp. 1123, 1131 (D. Alaska 1983). The OCSLA is

the successor to the Submerged Lands Act, which created United

States jurisdiction and control over the seabed and subsoil of

the Outer Continental Shelf. H.R. Rep. No. 83-413, at 1-2

(1953). Through the OCSLA, Congress sought to extend federal

power over the area to promote “leasing,” “discovery[,] and

development.” Id. at 2,3.

The discovery of extremely valuable deposits of oil

and gas and probably sulfur in the seabed of the

Continental Shelf off the shores of the United States,

as well as its vast potential as a source for other

raw materials, gave rise to the necessity for

protection and control of the area and administration

of the development of its economic wealth, so

essential to our economy in peace or war.

S. Rep. No. 83-411, at 7 (1953). In short, “[t]here can be no

question that the primary purpose for this legislation was to

assert United States jurisdiction over the shelf, and to set up

a system for the full development of its natural resources.”

Olsen v. Shell Oil Co., 561 F.2d 1178, 1188 (5th Cir. 1977).

Its key purpose “was to expedite the exploration and development

of the [O]uter [C]ontinental [S]helf while retaining adequate

assurances that the marine and coastal environments would be

protected.” Watt, 565 F. Supp. at 1131.

“Clearly [] patent law was” somewhat similarly “enacted to

benefit society by encouraging discoveries and inventions.”

Dennis v. Pitner, 106 F.2d 142, 144 (7th Cir. 1939). The

OCSLA’s legislative intent to encourage discovery and invention

in the scope of coastal resource exploration is necessarily

compatible with patent law’s legislative intent. Patent law’s

protections are useful to encourage the desired discovery and

invention in the areas and devices governed by the OCSLA.

This is not to say that this legislative intent indicates

an unbounded desire by Congress to extend the reach of patent

law. “Congress has not,” for example, “enacted legislation that

extends [United States] patent law to cover infringement

occurring in the EEZ [United States Exclusive Economic Zone].”

WesternGeco, 776 F. Supp. 2d at 369. Nevertheless, through the

OCSLA, Congress exhibited the intent to extend federal law,

which necessarily includes patent law, at the very least to

devices or installations for energy generation attached to the

seabed within 200 miles of the coast. See 43 U.S.C. §

1333(a)(1)(A).

2.

The Ambit of Federal Jurisdiction Under the OCSLA

“[T]he federal government has jurisdiction and control

over the [O]uter [C]ontinental [S]helf.” Amber Res. Co., 538

F.3d at 1362; People of Vill. of Gambell v. Hodel, 869 F.2d

1273, 1277 (9th Cir. 1989) (“[T]he United States has extended

its dominion 200 miles beyond the three-mile marginal sea.”);

Mote v. Oryx Energy Co., 642 F. Supp. 639, 642 (E.D. Tex. 1995)

(“Artificial islands may be considered within the boundaries of

the adjacent state for purposes of determining where an accident

‘occurred’ for long-arm jurisdiction purposes.”). Several

courts have applied this maxim and confirmed that the reach of

this jurisdiction applies to patent infringement cases. See

Elbit Sys. Land v. Hughes Network Sys., LLC, No. 2:15-CV-37-RWS-

RSP, 2016 WL 3675590, at *2 (E.D. Tex. Mar. 30, 2016) (holding

venue was proper in the Eastern District of Texas “[b]ecause the

acts of alleged infringement occurred on platforms permanently

or temporarily attached to the seabed, which may be erected

thereon for the purpose of exploring for, developing, or

producing resources therefrom and because at least four of those

platforms are within 200 miles of Port Arthur, Texas” (internal

quotations omitted)); Weatherford Tech. Holdings, LLC v. Tesco

Corp., No. 2:17-CV-00456-JRG, 2018 U.S. Dist. LEXIS 183553, at

*14 (E.D. Tex. Oct. 26, 2018) (holding the same in a nearly

factually identical case). In fact, “OCSLA was intended to

apply to the full range of disputes that might occur on the

[Outer Continental Shelf] . . . . OCSLA not only defines the law

applicable to the [Outer Continental Shelf], but also grants

federal courts jurisdiction over disputes occurring there.”

Tennessee Gas Pipeline v. Hous. Cas. Ins. Co., 87 F.3d 150, 154

(5th Cir. 1996).

3.

Caselaw on this Issue

Very few cases have considered the key question in this

case: whether United States patent law applies to certain

inventions attached to the Outer Continental Shelf. The few

that have “make clear that the OCSLA, when its requirements are

satisfied, encompasses patent law claims.” Elbit Sys. Land &

C4I Ltd., 2016 WL 3675590, at *3.

The Southern District of Texas in WesternGeco L.L.C. v. Ion

Geophysical Corp. held that “[United States] substantive law,

including patent law” did not extend to “exploration activities”

of vessels traversing the seas above the Outer Continental

Shelf; it also suggested in dicta, however, that it could extend

to “devices permanently or temporarily attached to the seabed.”

776 F. Supp. 2d at 371.

More explicitly, the Eastern District of Texas has held

that, under the OCSLA, patent law applied to rigs operating on

the Outer Continental Shelf in the Gulf of Mexico. L.C.

Eldridge Sales Co. v. Azen Mfg. Pte., Case No. 6:11-cv-599, 2013

U.S. Dist. LEXIS 186151 at *4 (E.D. Tex. Nov. 13, 2013) (“The

Patent Act is a law of the United States extended through the

OCSLA.”); L.C. Eldridge Sales Co. v. Jurong Shipyards, Pte.,

Ltd., No. 6:11CV599, 2014 WL 12597719, at *2-3 (E.D. Tex. Sept.

23, 2014) (refusing to grant “judgment as a matter of law or a

new trial on the issue of whether infringing activities took

place in or were directed to the [United States]” where it was

undisputed that the rigs operated on the Outer Continental Shelf

and where the only issue of dispute was whether the rigs were

“connected to the [O]uter Continental Shelf”), aff'd in part,

610 F. App’x 1015 (Fed. Cir. 2015). Furthermore, at least one

court has explicitly rejected the argument made by GE in this

case, see Mem. Supp. Def. GE’s Mot. Summ J. Non-Infringement

U.S. Act. (“GE’s Mem. Non-Infringement U.S. Act”) 2, ECF No.

149, that WesternGeco supports the notion that waters more than

twelve nautical miles off the coast are not within the United

States for patent law purposes, see Elbit Sys., 2016 WL 3675590,

at *3 (“[D]efendants misunderstand WesternGeco, which held that

the OCSLA was inapplicable specifically because the accused

infringing activities in that case involved a marine vessel

traversing the seas and conducting seismic surveys, not devices

permanently or temporarily attached to the seabed, or to devices

or vessels meant to transport resources obtained from the

seabed.” (internal quotation marks omitted)).

Therefore, GE’s motion for summary judgment based on the

absence of a United States infringing act fails as a matter of

law, because it is undisputed that the Haliade-X wind turbines

for energy generation will be affixed to the seabed within 200

miles from the United States coastline, and a wind turbine

affixed within 200 nautical miles of the coast is “within the

United States” under patent law, 35 U.S.C. 271(a).

C. Disputes of Material Fact

This Court could have arrived at the same conclusion,

notwithstanding its holding, in light of the genuine disputes of

material fact that existed at the summary judgment stage as to

whether the Haliade-X turbines will be installed within twelve

miles of the United States coast. Even were this Court to take

GE’s allegation that the wind turbines will be more than fifteen

miles off the coast of New Jersey and more than twelve miles of

the coast of Nantucket and Martha’s Vineyard as true, GE’s Mem.

Non-Infringement U.S. Act 4, as Siemens argues, an item being

more than twelve miles off the nautical coast from one

geographic point does not necessarily guarantee that it is

located more than twelve miles from any United States coast, see

Pl.’s Resp. Def. GE’s Mot. Summ J. Non-Infringement Lack of U.S.

Act. 7-9, ECF No. 191.

Siemens disputes, and GE fails to provide any affirmative

evidence to rebut, that the wind turbines will be more than

twelve miles away from every point of the nearest United States

coastline.

V. CONCLUSION

This Court therefore DENIES GE’s Motion for

Reconsideration. The Court’s April 4, 2022 Order clarifying its

Markman interpretations was not an unfair surprise and the

clarifications were proper.

This Court ALLOWS GE’s Motion for Clarification and holds

that patent law applies to “installations and other devices

permanently or temporarily attached to the seabed, which may be

erected thereon for the purpose of exploring for, developing, or

producing resources, including non-mineral energy resources,”

within 200 miles of the coastline. See 43 U.S.C. §

1333(a)(1)(A) (emphasis supplied). Accordingly, this Court

denied GE’s motion for summary judgment for lack of a United

States infringing act because among other reasons, the Haliade-X

turbines will undisputedly be installed at least within 200

miles of the United States coast. See Def. GE’s Mot. Summ. J.

Non-Infringement Lack U.S. Act; April 4, 2022 Order 2.

SO ORDERED.

/s/ William G. Young

WILLIAM G. YOUNG

JUDGE

of the

UNITED STATES5

5 This is how my predecessor, Peleg Sprague (D. Mass. 1841-

1865), would sign official documents. Now that I’m a Senior

District Judge I adopt this format in honor of all the judicial

colleagues, state and federal, with whom I have had the

privilege to serve over the past 44 years.