California court dismisses main Tigo patent claim against SunSpec Alliance

On June 28, 2023, the U.S. District Court for the Northern District of California dismissed Tigo Energy’s most consistent patent infringement claims against SunSpec Alliance, a non-commercial alliance that does not manufacture or sell any products, and its quick-disconnect standard. The court rejected Tigo’s alleged theories of liability for patent infringement based on “actions by SunSpec, its members, customers and solar system installers” that “do not reasonably demonstrate infringement.”

Tigo filed a complaint against SunSpec in February 2023. After SunSpec filed a motion to dismiss, Tigo amended its complaint in April. As the Court noted, the Amended Complaint “took a piecemeal approach to its claim” of patent infringement, alleging “various acts by various actors (SunSpec, but also by laboratories, SunSpec members, customers, and solar panel installers not named as defendants).” in this suit)’ and ‘a breakdown of certain arguments made on each’.

Tigo alleged that SunSpec infringed the claims of US patent no. 8,933,321 (the “321 patent”) (1) establishing an industry standard for quick shutdown of solar power systems, (2) inducing SunSpec members or customers or their installers. members to directly infringe the `321 patent, or (3) by testing members’ products or testing laboratories authorized to test those products.

The court rejected Tigo’s “novel” theory that SunSpec should be held liable for patent infringement based solely on the standard setting, noting that the parties were unaware of any prior case in which a standard setting entity was held liable for patents. for infringement solely for publication. . The court also rejected Tigo’s claims that SunSpec caused SunSpec members or their customers or installers to infringe the ‘321 patent; Contrary to the first two theories, the court allowed Tigo’s infringement allegations regarding the quick-disconnect product testing to stand “for now,” but noted that “SunSpec may prove otherwise as this case develops.”

“As a non-profit trade alliance, SunSpec is baffled as to why Tigo would choose to attack the companies it serves,” said SunSpec Alliance President Tom Tansey. “When Tigo notified us in late 2017 that it had filed ‘indispensable (patent) claims’ against the SunSpec Rapid Shutdown feature, we immediately met with members to inform them that they should negotiate with any company that has a valid claim. has citing Tigo as claimant, and published Tigo’s claim. Tigo has committed to licensing its patents related to quick disconnect, including the `321 patent, which was asserted in this case, on reasonable and non-discriminatory (RAND) terms. But this is the third lawsuit they have filed without trying to negotiate.”

The Court gave Tigo 20 days from the Court’s order to amend its complaint in an attempt to reinstate its dismissed claims. If Tigo takes that action, SunSpec is prepared to challenge those claims as well.

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