Westinghouse ITC Complaint Against Zep Shines Light on Past Litigation

October 21st, 2011 by David Gibbs* Leave a reply »

  

Previous posts (here and here) discussed the patent litigation pending in federal court between solar installation competitors Akeena Solar (now Westinghouse Solar) and Zep Solar (Zep) involving two Westinghouse patents, U.S. Patents Nos. 7,406,800 (‘800 Patent) and 7,987,641 (‘641 Patent).

Westinghouse recently opened a new front in this patent battle when it filed a complaint (Westinghouse-Zep_Complaint) against Zep and Canadian Solar (Canadian) with the U.S. International Trade Commission (ITC).

The complaint accuses Zep and Canadian of infringing the ‘800 Patent and the ‘641 Patent and licensing the patents to certain unnamed Chinese manufacturers.

Both the patents at issue cover what Westinghouse refers to as the “Andalay System,” a solar power system which includes solar panels with integrated racking, wiring and grounding (DC solar panels), and integrated microinverters (AC solar panels) for residential and commercial customers.

The accused Zep system employs the company’s “Zep Groove,” which makes the panel itself part of the racking hardware via a specially grooved frame.   This innovation eliminates rails and uses the module frame as the structural and mounting element.

Westinghouse asserts that Zep has infringed Claims 6 and 10 of the ‘800 patent and Claim 1 of the ‘641 patent. Claims 6 and 10 of the ‘800 patent cover a splice, which connects two solar modules, and a wiring connection that prevents improper wiring. Claim 1 of the ‘641 patent covers another splice connector.

The ’800 Patent describes a mounting system for a solar panel (100).  FIG. 2 shows three modules (102A-102C) coupled together to form an integrated system.  A splice (104e) mechanically connects one module to another and provides the electrical grounding connection between the solar modules.

 

800_patent_fig2.JPG

In the example shown in FIG. 2B, an east-west splice (104) connects modules (102A and 102B).  The splice (104) is a tapered conductive metal to provide the grounding between modules and is grooved for easy screw insertion.  The splice (104) precisely aligns the modules and allows for compression of connector sockets to complete the electrical connection between adjacent modules.

800_patent_fig2a.JPG

According to the ’800 Patent, the splice (104) provides several useful features, including mechanical rigidity between modules, an alignment method between modules and a grounding path that eliminates the need to run a grounding wire between the modules.

Westinghouse Solar’s ITC complaint seeks an investigation into both Zep and Canadian, a permanent exclusion order barring certain of their products from being imported into the United States, and a cease and desist order prohibiting the importation, sale, offer for sale, advertising, or the soliciting of the accused products.

Zep CEO, Mike Miskovshy, stated the claims by Westinghouse are groundless and misleading. Miskovsky also noted that Zep Solar has its own patents for solar installation techniques which predate the Westinghouse patents.

Defending itself in the prior federal court suit, Zep filed a request to the United States Patent and Trademark Office (USPTO) for reexamination of the ‘800 Patent. The USPTO granted the request for reexamination on April 9, 2010 and the court stayed the case five days later, pending the outcome of the USPTO’s reexamination.

As a result of the reexamination, the USPTO canceled 9 of the 12 claims (claims 1-4, 7-9, 11 and 12) of the ‘800 patent. Zep has filed for reexamination of the remaining three claims. The second reexamination is still pending.

Westinghouse moved to lift the stay but the court denied the motion pending results of the second ‘800 patent reexamination.

Zep also filed a request for reexamination of the ‘641 patent. On September 23, 2011, the USPTO issued an initial action cancelling all three claims of the ‘641 patent. No further action has been taken regarding the ‘641 patent claim rejection.

Nevertheless, Westinghouse’s ITC complaint accuses Zep of infringing dependent claims 6 and 10 of the ‘800 patent. Independent claim 1, from which claims 6 and 10 depend, has been canceled and the USPTO is currently reexamining both claims 6 and 10 of the ’800 patent.

The complaint also accuses Zep of infringing claim 1 of the ‘641 patent, which has been canceled.

Westinghouse’s filing with the ITC could be seen as an attempt to seek alternative relief while the federal court case is stalled. 

The ITC provides patentees with the potential to stop the importation of the accused devices into the United States under Section 337 of the Tariff Act of 1930. In particular, Westinghouse may be hoping to take advantage of the ITC remedy of an exclusion order, which stops infringing goods at the U.S. border. 

The ITC complaint also suggests the move to the ITC was prompted by Zep’s licensing of the accused technology to foreign manufacturers.

However, it seems unlikely that the ITC would issue a ruling until the USPTO rules on the reexamination of the remaining three claims of the ‘800 patent.

This move by Westinghouse and the internationalization of this patent dispute to include Chinese licensees comes at a time of rising trade tensions between the United States and China as the U.S. Congress is considering taxing Chinese imports, and in light of a recent industrial espionage lawsuit filed against Sinovel, a Chinese wind energy manufacturer.

Treasury Secretary Geithner recently made some public comments accusing China of “systematic stealing intellectual property of American companies.”

The ITC should decide whether to initiate a formal investigation within the next 30 days.

David Gibbs is a contributor to Green Patent Blog.  David is currently in his third and final year at Thomas Jefferson School of Law in San Diego.  He received his undergraduate degree in Geology from the University of California, Berkeley.

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