Patent Office Invalidates Tigo Energy, Inc.’s Patent Claims in Response to SunSpec Alliance IPR Challenge
SAN JOSE, CA – January 30, 2023 – The SunSpec Alliance, the open information standards and certification organization for the Distributed Energy Resources (DER) industry, is pleased to announce that the U.S. Patent and Trademark Office today invalidated key patent claims of Tigo Energy, Inc.’s U.S. Patent No. 10,256,770 (the ‘770 patent) that Tigo has used to threaten and attack the SunSpec Alliance, SunSpec member companies, and other solar power companies.
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.” This included that SunSpec had shown that a single reference, U.S. Pat. No. 8,531,055 (the “Adest ‘055” reference) anticipated the claims by disclosing all elements of claims 12 and 13. It also included that SunSpec had shown by a preponderance of the evidence that claims 12 and 13 were also obvious in view of two other combinations of references.
Thomas Tansy, SunSpec’s Chairman, said, “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.”
Tigo had argued that the defeated patent claims relate to SunSpec’s Rapid Shutdown Specification and alleged that SunSpec and certain SunSpec member companies infringed the ‘770 patent, along with other patents. But the Patent Office’s decision confirms that the purported inventions that Tigo had claimed in claims 12 and 13 of the ‘770 patent were actually previously disclosed by and rendered obvious by the prior art.
“At SunSpec, we create standards using well-known and proven prior art techniques to provide interoperability for SunSpec’s members while avoiding intellectual property claims by other companies,” Tansy explained. 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. Tigo had reached into the prior art for the now-defunct claims, which included such basic building blocks from the prior art 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. But because of the Patent Office’s decision on these claims of the ‘770 patent, Tigo will not be able to assert them against any company in the future.
Tigo previously filed suit against two SunSpec member companies, Altenergy Power Systems, and SMA Solar Technology. After Tigo’s threats, allegations, and aggressive actions, SunSpec, supported by several of its member companies, filed IPR petitions against certain claims of the ‘770 patent and Tigo’s U.S. Patent No. 8,933,321 (the ‘321 patent), which it had asserted in these litigations. In a victory for SunSpec, its members, and the entire solar industry, The Patent Office confirmed the unpatentability of claims 12 and 13 of the ‘770 patent in its decision today.
“We are gratified by this decision, which means that these claims from this submarine patent are no longer available for Tigo to threaten SunSpec, its members, or anyone else going forward,” said Tansy.
The Patent Office ultimately declined to cancel certain other challenged claims of the ‘770 and ‘321 patents in its decisions today. SunSpec is still considering its options with respect to these claims, including the possibility of appealing the decisions on those claims.
“While we are tremendously grateful with the Patent Office’s decision on claims 12 and 13 of the ‘770 patent, we disagree with its decision on the other challenged claims and are considering all options to protect ourselves, our members, and the solar industry as a whole from Tigo’s aggression,” Tansy concluded.
About SunSpec Alliance
SunSpec Alliance is the open information standards and certification organization for the Distributed Energy Resources industry. SunSpec communication standards address operational requirements of solar and energy storage on the smart grid to reduce cost, promote technology innovation, and accelerate industry growth. More information at: www.SunSpec.org
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