Solar panel companies victorious as patent win affirmed

The US Court of Appeals for the Federal Circuit has affirmed a decision that three patents asserted against two solar panel companies are invalid.

It ruled yesterday, May 21, that the patents, which are directed to “roof mount sealing assemblies”, were invalid over an earlier patent. D Three Enterprises had sued SunModo, based in Washington, and Arizona-based Rillito River Solar (which does business as EcoFasten Solar) for infringement.

The US District Court for the District of Colorado ruled in favour of SunModo and EcoFasten Solar after they requested a motion for summary judgment that claims of the patents were invalid because D Three could not claim priority from US patent number 61/150,301 (the 2009 application).

D Three—which owns US patent numbers 8,689,517; 9,068,339; and 8,707,655—appealed to the Federal Circuit, where Circuit Judges Reyna, Clevenger and Wallach heard the case.

Wallach, who wrote the opinion, provided further detail on the patents, saying they cover “roof mount sealing assemblies which allow users to mount objects on a roof and seal ‘the mounting location … against water’”.

SunModo’s allegedly infringing products were available to the public in 2010, while EcoFasten’s was available in June 2009, the court noted.

D Three claimed that the district court erred in granting summary judgment “because a genuine issue of material fact exists as to whether the 2009 application adequately discloses the asserted claims of the patents-in-suit,” the court explained.

Specifically, it added, the district court divided the claims into two categories––those that recited a washer and those that did not––“and asked whether ‘the parent applications disclose roof mount assemblies that (a) do not have a soft washer but also do not limit the type of attachment bracket, and (b) have a soft washer but do not limit its location’”.

The district court found that the 2009 application’s only disclosure of a “washerless assembly” required an attachment bracket, while the asserted claims disclosed broader configurations of washerless assemblies, the Federal Circuit explained.

It added: “The district court also held that the 2009 application’s assemblies with washers only disclosed washers situated ‘above the flashing’, but the asserted claims covered assemblies with washers below the flashing.”

The court affirmed the earlier ruling, saying all “washerless claims” lack sufficient written description, meaning they cannot claim priority from the 2009 application.

It concluded: “The lack of any disclosure of an assembly with a washer below the flashing, or statement on the flexibility of the position of the washer, is fatal to D Three’s argument.”

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