The U.S. Patent and Trademark Office invalidated two patent claims of Tigo Energy this week and upheld nine others, all related to rapid shutdown, following a challenge by the SunSpec Alliance, an open information standards and certification organization for the distributed energy resources (DER). Both SunSpec and Tigo seem to be pleased with the ruling:
“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.
“We are grateful for the time, effort, and expert decision of the Patent Office, recognizing the merit of SunSpec’s challenges and the deficiencies of claims 12 and 13 of Tigo’s ‘770 patent,” stated Thomas Tansy, SunSpec Chairman.
Tigo is a SunSpec Alliance member, which exists to create clean intellectual property to device industry specs and standards that can be adopted royalty free. The two invalidated claims (12 and 13 of patent No. 10,256,770) were related to the SunSpec Rapid Shutdown Specification. The Patent Office’s Patent Trial and Appeal Board issued a Final Written Decision in connection with the ‘770 patent finding that SunSpec as the “Petitioner has shown by a preponderance of the evidence that claims 12 and 13 of the ’770 patent are unpatentable.” The Patent Office’s decision confirms these two claims were previously disclosed in No. 8,531,055 (the “Adest ‘055” reference).
With this Patent Office decision on these claims of the ‘770 patent, Tigo will not be able to assert them against any company in the future.
But SunSpec Alliance challenged 11 claims in Tigo’s 770 and patents 8,933,321 patents, nine of which were upheld. Tigo does not believe the two invalidated claims effect its 18 remaining claims in the ’770 patent. Its ‘321 patents remain intact.
“SunSpec is still considering its options with respect to these claims, including the possibility of appealing the decisions on those claims,” Tansy says.
SunSpec had previously published a white paper and a prior art study, that included some of the prior SunSpec relied on, confirming the organization’s practice for its Rapid Shutdown Specification. These particular claims were related to “basic building blocks,” SunSpec notes in its press release, from the prior art, such as a controller that is “basically a watchdog timer, and a heartbeat signal that the controller detects to know when to reduce the power output of a solar panel as a result of a skip or other anomaly in the heartbeat signal.”
Tigo alleged that SunSpec and certain SunSpec member companies infringed the ‘770 patent, along with other patents, filing suit against APsystems and SMA Solar Technology. The SMA lawsuit alleges five other infringements too, regarding the US patents 8,823,218, 8,933,321, 9,584,021, 9,966,848, and 10,333,405. Tigo reached a settlement with APsystems in 2021 to license rapid shutdown tech.