While the SunSpec Alliance celebrated the U.S. Patent and Trademark Office (USPTO) accepting two rapid shutdown patent challenges out of 18 in its Final Written Order on January 26, Tigo Energy is declaring victory since the majority of challenges were rejected.
Tigo Energy said the USPTO has denied a SunSpec Alliance challenge to the validity of Tigo U.S. Patent No. 8,933,321 in its entirety, as well as denying the organization’s challenge to the validity of claims 14-16 of Tigo U.S. Patent No. 10,256,770. The Tigo patent claims upheld by the USPTO are relevant to the SunSpec Alliance Rapid Shutdown Specification. Rapid shutdown is a safety function for photovoltaic systems on buildings, designed to reduce the risk of electrical shock to emergency responders, and is mandated by building codes and regulatory bodies in the U.S. and in a rapidly growing number of countries around the world.
In its two IPR (inter partes review) filings from February, 2022, SunSpec Alliance challenged 11 claims in Tigo’s ’321 and ’770 patents with the aspiration to show those claims as being invalid based on prior art. In the January, 2023 ruling, the USPTO overwhelmingly rejected the SunSpec Alliance IPRs by upholding nine of the Tigo patent claims it challenged. Tigo says the ruling on the two other claims has no effect on the applicability of the 18 remaining claims in the ’770 patent to the SunSpec Rapid Shutdown Specification.
“We welcome this ruling by the U.S. Patent Office, which not only demonstrates the value and strength of our IP portfolio, but also allows Tigo and the rest of the solar industry to continue bringing solar installers the high-quality equipment on which they rely,” said Zvi Alon, chairman and CEO at Tigo Energy, Inc. “For many years, Tigo has deployed financial and human capital to develop novel technologies that deliver safe and reliable solutions for the solar industry. Our patents reflect the advancements and contributions we have made to solar. And as with previous patent challenges, Tigo will offer reasonable and non-discriminatory licensing terms to SunSpec Alliance members.”
News item from Tigo Energy
Details are important and not all claims have equal weight or validity. The patent office has determined that Tigo’s claim pertaining to their use of a heartbeat signal is invalid. In every other case that I’ve ever heard of, things that need a heartbeat and don’t have one are (in polite terms) “non viable.”
Furthermore, negotiations that start with a threat of a lawsuit (see Altenergy Power Systems, SMA Solar Technology) are neither reasonable nor non-discriminatory.