DCT

2:19-cv-01391

Permacity Corp v. Orion Solar Racking Inc

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Key Events
Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:19-cv-01391, C.D. Cal., 02/25/2019
  • Venue Allegations: Venue is alleged to be proper as Defendants are California corporations or residents that regularly transact business and have allegedly committed acts of patent infringement within the judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s commercial solar panel roof mount systems and fasteners infringe three patents related to solar panel mounting technology and methods.
  • Technical Context: The technology at issue involves apparatuses and methods for mounting solar panels to roofs, focusing on systems that are less expensive and faster to install while minimizing roof penetrations.
  • Key Procedural History: The complaint alleges that the parties entered into a Mutual Nondisclosure Agreement (NDA) in July 2013, under which Plaintiff disclosed confidential designs for its "SolarStrap®" product. Plaintiff claims it later discovered in February 2015 that Defendant was selling a "nearly exact copy" and sent a letter putting Defendant on notice of pending patent applications that later issued as the patents-in-suit. This history forms the basis for the willfulness allegations.

Case Timeline

Date Event
2013-02-11 Earliest Priority Date for '347 and '574 Patents
2013-07-03 Parties enter into Mutual Nondisclosure Agreement
2014-01-16 Earliest Priority Date for '509 Patent
2015-02-01 (Approx.) Plaintiff learns of Defendant's allegedly infringing product
2015-02-03 Plaintiff sends letter to Defendant regarding alleged infringement
2017-01-24 '509 Patent Issues
2017-08-22 '347 Patent Issues
2018-05-29 '574 Patent Issues
2019-02-25 Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 9,742,347 - Modular Strap Mount for Solar Panels

Issued: August 22, 2017

The Invention Explained

  • Problem Addressed: The patent describes conventional solar panel mounting systems as being heavy, expensive to fabricate, and time-consuming to install, creating a need for a more efficient solution (’347 Patent, col. 1:40-44).
  • The Patented Solution: The invention is a modular mounting apparatus using a "strap assembly" composed of multiple individual straps attached end-to-end. This strap assembly is connected to the solar panel via brackets and then secured to a surface, such as a roof, using various means including ballast, fasteners, or adhesives (’347 Patent, Abstract; col. 3:46-54). This approach is intended to provide a system that is cheaper to make and faster to install (’347 Patent, col. 1:47-52).
  • Technical Importance: The technology sought to lower significant barriers to solar energy adoption by reducing the material costs and labor time associated with rooftop installations (’347 Patent, col. 1:47-52).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶34).
  • Essential elements of claim 1 include:
    • A strap assembly comprising a plurality of straps attached end overlapping end.
    • A first attaching means for attaching a solar panel directly to the strap assembly, which itself comprises a fastener, an insert, and a clip.
    • The clip is disposed between two solar collector panels and the fastener clamps the two panels to the straps.
    • A second attaching means for attaching the strap assembly to the surface.

U.S. Patent No. 9,985,574 - Modular Strap Mount for Solar Panels

Issued: May 29, 2018

The Invention Explained

  • Problem Addressed: Similar to its related '347 patent, this patent addresses the high cost and complexity of prior art solar panel mounting systems (’574 Patent, col. 1:46-51). The complaint clarifies that this patent covers a method, whereas the '347 patent covers an apparatus (Compl. ¶21).
  • The Patented Solution: The patent claims a method for mounting solar panels. The method involves the steps of providing straps, attaching them together to form an assembly, providing a support (e.g., a bracket), and using the support to attach the panel to the strap assembly, which is then secured to the surface (’574 Patent, Abstract; col. 8:20-41).
  • Technical Importance: The invention provides a defined, repeatable process for installing a modular mounting system, which can simplify training and improve the consistency and speed of installations (’574 Patent, col. 1:52-56).

Key Claims at a Glance

  • The complaint asserts at least independent claim 1 (Compl. ¶42).
  • Essential steps of claim 1 include:
    • Providing a plurality of straps.
    • Attaching the straps together end overlapping end.
    • Providing a support of rectangular cross section having a top flange and a bottom flange.
    • Attaching the top flange directly to the panel.
    • Attaching the strap assembly to the surface.
    • Attaching the bottom flange to the strap assembly.

U.S. Patent No. 9,551,509 - Apparatuses and Methods for Fastening Roofing Straps and Structural Members to Roofs

Issued: January 24, 2017

  • Technology Synopsis: This patent addresses the problem of attaching solar mounting systems to roofs while avoiding membrane penetration and potential water leakage (’509 Patent, col. 1:49-52). The solution involves an assembly of layered roofing material strips and metal plates that encapsulate and secure a mounting strap, creating a positive mechanical and weather-sealed connection to the roof surface (’509 Patent, Abstract; col. 2:21-41).
  • Asserted Claims: At least independent claim 1 (Compl. ¶50).
  • Accused Features: The complaint accuses "certain commercial roof mount fasteners" sold by Defendant of infringing the '509 patent (Compl. ¶50).

III. The Accused Instrumentality

Product Identification

The complaint identifies "Orion's Ballasted and Non-Ballasted Roof Mount Systems" and "certain commercial roof mount fasteners" as the accused instrumentalities (Compl. ¶¶34, 50).

Functionality and Market Context

The complaint alleges that the accused systems are for mounting solar panels on commercial roofs (Compl. ¶34). It provides minimal technical detail but makes the notable allegation that Defendant's system "appeared to be a nearly exact copy of the PermaCity SolarStrap® product," the design for which was allegedly disclosed to Defendant under an NDA (Compl. ¶30). The complaint further alleges that Plaintiff's own SolarStrap® product is a "leading product of its kind in the market," suggesting the accused systems compete directly for the same customers (Compl. ¶19).

No probative visual evidence provided in complaint.

IV. Analysis of Infringement Allegations

The complaint makes conclusory allegations of infringement without providing an element-by-element mapping of the accused products to the patent claims. The infringement analysis will therefore depend on evidence produced during discovery.

'347 Patent Infringement Allegations

  • The complaint alleges that Defendant’s systems directly infringe at least claim 1 of the '347 patent (Compl. ¶34).
  • Identified Points of Contention:
    • Technical Question: A primary factual dispute will be whether the accused systems contain the specific three-part "first attaching means" recited in claim 1, comprising a "fastener, an insert, and a clip," and whether this mechanism functions to clamp two separate solar panels to the strap assembly as the claim requires.
    • Scope Question: Does the structure of Defendant's products meet the definition of a "strap assembly" formed by attaching a "plurality of straps... end overlapping end"? The specific manner of connection will be a point of analysis.

'574 Patent Infringement Allegations

  • The complaint alleges that Defendant indirectly infringes at least claim 1 of the '574 patent by encouraging its customers to install its systems in an infringing manner (Compl. ¶42).
  • Identified Points of Contention:
    • Technical Question: What do Defendant’s installation manuals and instructions direct customers to do? The core of the dispute will be whether those instructions, when followed, result in the performance of every step of the claimed method.
    • Scope Question: Does the installation of Defendant’s system involve "providing a support of rectangular cross section" and attaching it to both the panel and the strap assembly as specified in the claim? The geometry and function of Defendant's components will be compared against this limitation.

V. Key Claim Terms for Construction

For the '347 Patent

  • The Term: "a first attaching means for attaching one of said panel and said frame directly to said strap assembly; said first attaching means comprising a fastener, an insert, and a clip"
  • Context and Importance: This term from claim 1 defines a highly specific three-part structure for connecting a panel to the strap assembly. Practitioners may focus on this term because its detailed, multi-component nature provides a clear potential avenue for a non-infringement defense if the accused product lacks even one of the recited components (fastener, insert, clip) or if they do not function together as claimed.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The patent states that the figures are illustrative and the invention is not limited to them, which could support an argument that the terms should not be confined to the exact depicted embodiments (’347 Patent, col. 2:36-41).
    • Evidence for a Narrower Interpretation: The detailed description of the clamping mechanism in relation to Figure 17A shows a specific threaded insert (118) and bolt (144) used with a clip (76), which could be used to argue that the terms refer to this specific arrangement (’347 Patent, col. 6:22-30).

For the '574 Patent

  • The Term: "providing a support of rectangular cross section"
  • Context and Importance: This step from claim 1 defines the geometry of a key component in the patented method. The construction of this term will be critical because if Defendant’s components do not have a "rectangular cross section," then a necessary step of the method claim may not be met.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The term "support" is used generally, and "rectangular" could be argued to not require perfect 90-degree angles or four complete sides, potentially encompassing components with substantially rectangular profiles.
    • Evidence for a Narrower Interpretation: The specification depicts brackets with specific C-shaped or Z-shaped cross-sections (’574 Patent, col. 3:67-col. 4:1). A defendant may argue that "rectangular" should be construed narrowly and does not read on these C- or Z-shaped embodiments, or that the term is limited to the specific supports shown in the figures.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement for all three patents, asserting Defendant encourages its customers to use or install the accused systems (Compl. ¶¶35, 42, 51). For the '574 patent, it also alleges contributory infringement, claiming the provided components have no substantial non-infringing use (Compl. ¶43). The complaint further names corporate officers Sinai and Akman individually in counts of inducement (Compl. ¶¶57-74, 75-92).
  • Willful Infringement: The complaint alleges willful infringement for all patents based on Defendant’s alleged knowledge (Compl. ¶¶40, 48, 56). This knowledge is predicated on the parties' prior business relationship and an alleged notice letter sent in February 2015 that identified pending patent applications related to the technology (Compl. ¶¶27, 31).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A central evidentiary question will be one of technical identity: does the accused Orion system, alleged to be a "nearly exact copy," actually practice the specific and detailed claim limitations, such as the three-part "fastener, insert, and a clip" combination required by claim 1 of the '347 patent? The outcome may depend heavily on evidence of copying obtained from the alleged disclosure under the parties' prior NDA.
  • A key legal question will be one of claim construction: can the term "support of rectangular cross section," as used in the '574 method patent, be interpreted to cover the components supplied with Defendant’s systems? The court’s construction of this term will likely be dispositive for the infringement analysis of the asserted method claim.
  • A critical issue for damages will be intent and willfulness. The case will turn on whether the alleged use of confidential information, combined with continued sales after receiving a notice letter regarding pending applications, rises to the level of egregious conduct necessary to support a finding of willfulness and justify enhanced damages.