The SunSpec Alliance announced that the U.S. Patent and Trademark Office on January 30 invalidated key patent claims of Tigo Energy’s U.S. Patent No. 10,256,770 (the ‘770 patent) that Tigo has used against the SunSpec Alliance, SunSpec member companies and other solar power companies.
The Patent Office’s Patent Trial and Appeal Board issued a Final Written Decision in connection with the ‘770 patent finding that SunSpec as the “Petitioner has shown by a preponderance of the evidence that claims 12 and 13 of the ’770 patent are unpatentable.” This included that SunSpec had shown that a single reference, U.S. Pat. No. 8,531,055 (the “Adest ‘055” reference) anticipated the claims by disclosing all elements of claims 12 and 13. It also included that SunSpec had shown by a preponderance of the evidence that claims 12 and 13 were also obvious in view of two other combinations of references.
“We are grateful for the time, effort and expert decision of the Patent Office, recognizing the merit of SunSpec’s challenges and the deficiencies of claims 12 and 13 of Tigo’s ‘770 patent,” said SunSpec chairman Thomas Tansy.
Tigo Energy believes those two invalidated claims have no effect on the applicability of the 18 remaining claims in the ’770 patent to the SunSpec Rapid Shutdown Specification.
Tigo had argued that the defeated patent claims relate to SunSpec’s Rapid Shutdown Specification and alleged that SunSpec and certain SunSpec member companies infringed the ‘770 patent, along with other patents. But the Patent Office’s decision confirms that the purported inventions that Tigo had claimed in claims 12 and 13 of the ‘770 patent were actually previously disclosed by and rendered obvious by the prior art.
SunSpec had previously published a white paper and a prior art study, that included some of the prior SunSpec relied on, confirming the organization’s practice for its Rapid Shutdown Specification. Tigo had reached into the prior art for the now-defunct claims, which included such basic building blocks from the prior art as a controller that is basically a watchdog timer and a heartbeat signal that the controller detects to know when to reduce the power output of a solar panel as a result of a skip or other anomaly in the heartbeat signal. But because of the Patent Office’s decision on these claims of the ‘770 patent, Tigo will not be able to assert them against any company in the future.
After Tigo’s threats, SunSpec, supported by several of its member companies, filed IPR petitions against certain claims of the ‘770 patent and Tigo’s U.S. Patent No. 8,933,321 (the ‘321 patent), which it had asserted in these litigations.
The Patent Office confirmed the unpatentability of claims 12 and 13 of the ‘770 patent in its decision in January, but ultimately declined to cancel certain other challenged claims of the ‘770 and ‘321 patents. SunSpec is still considering its options with respect to these claims, including the possibility of appealing the decisions on those claims.
“While we are tremendously grateful with the Patent Office’s decision on claims 12 and 13 of the ‘770 patent, we disagree with its decision on the other challenged claims and are considering all options to protect ourselves, our members and the solar industry as a whole from Tigo’s aggression,” Tansy concluded.
News item from the SunSpec Alliance. Updated on February 1.
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