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 the most consequential of Tigo Energy’s patent infringement claims against the SunSpec Alliance, a non-profit trade alliance that makes and sells no products, and its Rapid Shutdown standard. The Court rejected Tigo’s alleged theories of liability for patent infringement based on “acts by SunSpec, its members, customers, and solar system installers,” which “do not plausibly show 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 kitchen-sink approach to its claim” of patent infringement, “alleging different acts by different actors (SunSpec, but also the laboratories, SunSpec members, customers and solar panel installers not named as defendants in this suit)” and “collapsing certain arguments made regarding each.”
Tigo alleged that SunSpec infringed claims of U.S. Patent No. 8,933,321 (“the ’321 Patent”) (1) by setting an industry standard for rapid shutdown of solar power systems, (2) by inducing SunSpec members, or customers or installers of those members, to directly infringe the ’321 Patent, or (3) by testing members’ products, or having those products tested by authorized testing laboratories.
The Court rejected Tigo’s “novel” theory that SunSpec should be held liable for patent infringement based solely on setting a standard, noting that the parties were unaware of any prior case where a standard-setting organization had been held liable for patent infringement solely for publishing. The Court also dismissed Tigo’s claims that SunSpec had induced SunSpec members, or their customers or installers, to infringe the ’321 Patent — claims Tigo characterized as the “most consequential to this case.” Unlike the first two theories, the Court allowed Tigo’s infringement allegations concerning testing rapid shutdown products to remain in the case “for now” but noted that “SunSpec may prove otherwise as this case progresses.”
“As a non-profit trade alliance, SunSpec is confused why Tigo chooses to attack the companies it professes to serve,” said Tom Tansy, Chairman of the SunSpec Alliance. “When Tigo notified us in late 2017 that it had filed ‘necessary (patent) claims’ against the SunSpec Rapid Shutdown specification, we immediately met with members to let them know that they would need to negotiate with any company holding a valid claim, citing Tigo as a claimant, and published Tigo’s claim. Tigo committed to license its patents related to rapid shutdown, including the ’321 Patent asserted in this case, on Reasonable and Non-Discriminatory (RAND) terms. But this is the third litigation they have filed without attempting to engage in such negotiations.”
The Court has given Tigo 20 days from the Court’s order to amend its complaint to attempt to resurrect its dismissed claims. If Tigo takes that action, SunSpec is prepared to challenge those claims as well.
News item from the SunSpec Alliance
