DCT

1:23-cv-00956

Unirac, Inc. v. Chiko USA LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-00956, D. Del., 08/30/2023
  • Venue Allegations: Venue is alleged to be proper as to Chiko USA because it is a Delaware limited liability company residing in the district. Venue is alleged to be proper as to Shanghai Chiko Solar, a foreign entity, in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendants’ solar panel mounting systems infringe a patent related to a system for removably and adjustably mounting devices, such as photovoltaic modules, to a surface.
  • Technical Context: The technology concerns mechanical hardware for solar panel installations, a critical market segment enabling the secure and efficient mounting of solar arrays on surfaces like rooftops.
  • Key Procedural History: The asserted patent expired in March 2023, limiting this action to damages for past infringement. The patent previously survived an inter partes reexamination that confirmed the patentability of the claims currently asserted, while canceling several others. Additionally, a later petition for inter partes review (IPR) against the patent was denied institution by the Patent Trial and Appeal Board (PTAB), a procedural outcome that prevented a full validity trial at the patent office.

Case Timeline

Date Event
2001-07-20 ’362 Patent Priority Date
2008-10-14 ’362 Patent Issue Date
2011-08-09 Inter partes reexamination filed against ’362 Patent
2021-08-27 Inter partes review filed against ’362 Patent
2022-02-08 PTAB denies institution of IPR proceedings
2023-03-05 ’362 Patent expiration date
2023-08-30 Complaint Filing Date

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

U.S. Patent No. 7,434,362 - "System for Removably and Adjustably Mounting a Device on a Surface," issued October 14, 2008

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of mounting solar panels given the wide variety of module sizes, surface types, and the need for custom-built racks. Existing solutions were often cumbersome, unsafe, and lacked the flexibility to accommodate different installation scenarios, such as "top down" versus "bottom up" mounting. (’362 Patent, col. 2:10-24).
  • The Patented Solution: The invention proposes a universal mounting system centered on a "dual track rail." This extruded rail features at least two tracks, each with a channel and a slot, with the slots arranged at approximately a right angle to one another. This design, in combination with specialized clamps, is intended to provide a versatile and adjustable framework for securing photovoltaic modules to a "footing grid" on a surface like a roof. (’362 Patent, Abstract; col. 3:55-65; Fig. 1).
  • Technical Importance: The claimed system aimed to reduce the number and variety of hardware components required for solar installations, thereby creating a more universal, cost-effective, and easier-to-install solution. (’362 Patent, col. 3:35-44).

Key Claims at a Glance

  • The complaint asserts infringement of at least independent Claim 3.
  • The key elements of Claim 3, which appears to have been rewritten into independent form during reexamination after its parent Claim 2 was canceled, include:
    • A footing grid with at least one keeper.
    • At least one dual track rail removably mountable on the footing grid, the rail having a body with opposing sides and shoulders.
    • One or more clamps for securing a module to the rail and footing grid.
    • The rail’s body including a “first channel formed in one of the opposing sides for slidably engaging the rail to the footing grid.”
  • The complaint states that claims 3-7, 9, 10, and 15-23 are valid and enforceable, suggesting the right to assert additional claims is reserved (Compl. ¶20).

III. The Accused Instrumentality

Product Identification

  • The accused products are the “#518 System,” “#519 System,” and “Series 537R System,” which include various rails, mounts, and clamps for solar panel installation (Compl. ¶23).

Functionality and Market Context

  • The Accused Products are solar panel racking systems where support rails attach to a surface (e.g., a roof) via mounts, and solar panels are then fastened to the rails using clamps (Compl. ¶24). An image in the complaint displays the various system components, including the #518 and #519 rails and associated clamps. (Compl. p. 6). Another figure provides a technical cross-section of the accused 537R Rail, illustrating its structural profile. (Compl. p. 7).
  • The complaint alleges that Defendants are competitors of Plaintiff in the solar panel mounting industry and that the Chinese parent company, Shanghai Chiko Solar, provides the technology, design, and manufacturing for the products sold in the U.S. by Chiko USA (Compl. ¶21, ¶31).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits that were not filed with the public document; therefore, the infringement allegations are summarized below in prose based on the complaint's narrative and visual evidence.

The complaint alleges that Defendants' #518, #519, and 537R systems infringe at least Claim 3 of the ’362 Patent (Compl. ¶42). The infringement theory appears to be that the combination of Defendants' components constitutes the claimed "apparatus." The "footing grid" and "keeper" elements are likely met by the various mounting components (e.g., CK-FTH-01, CK-FTH-05B), while the "dual track rail" is met by the accused rails (e.g., the 537R Rail) (Compl. ¶23, p. 7). The various "Mid clamp" and "End Clamp" products are alleged to be the claimed "clamps" for securing panels (Compl. ¶24, p. 6). A key part of the infringement allegation will depend on showing that the profile of the accused rails, such as the one depicted in a cross-section diagram, contains a channel that meets the structural and functional requirements of the "first channel for slidably engaging the rail to the footing grid" limitation of Claim 3 (Compl. p. 7).

  • Identified Points of Contention:
    • Legal Question: A threshold legal question is the proper scope and validity of Claim 3. Because it was a dependent claim whose parent, Claim 2, was canceled during reexamination, its final, assertable form will be a central issue for the court to resolve.
    • Scope Questions: The dispute may turn on whether the accused rails meet the definition of a "dual track rail." Further, it raises the question of whether any channel on the accused rails, as shown in the complaint's diagrams, is structured and functions "for slidably engaging the rail to the footing grid," as the claim requires (Compl. p. 7).
    • Technical Questions: Without claim charts, a key question is what evidence Plaintiff will use to show that the accused components, when assembled, perform the functions required by the claims. For instance, what is the evidence that the interaction between Defendants' mounts and rails constitutes "slidably engaging"?

V. Key Claim Terms for Construction

  • The Term: "dual track rail"
    • Context and Importance: This term defines the central structural element of the invention. Its construction will determine whether Defendants' rail products (e.g., 537R Rail) fall within the scope of the claims. Practitioners may focus on this term because the specific geometry of the tracks is a key feature of the patented invention.
    • Intrinsic Evidence for a Broader Interpretation: The patent states that the system includes "at least one rail 12... formed with at least two tracks 14a,b," which could suggest that any rail with two distinct tracks for engagement would suffice (’362 Patent, col. 5:36-39).
    • Intrinsic Evidence for a Narrower Interpretation: The patent specifies that the "slot 18a in channel 16a... is formed substantially at a right angle A to slot 18b," a specific geometric relationship that a defendant may argue is a required feature of any "dual track rail" under the patent (’362 Patent, col. 5:46-51).
  • The Term: "first channel... for slidably engaging the rail to the footing grid"
    • Context and Importance: This is the specific limitation added by Claim 3 and is thus critical for differentiating it from the prior art and establishing infringement. Its construction will likely be a focal point of the dispute.
    • Intrinsic Evidence for a Broader Interpretation: The patent describes Channel 16a contributing to making the rail "slidably engageable with the one or more footings 36," potentially allowing the term to cover any channel that permits positional adjustment relative to the mounting hardware (’362 Patent, col. 6:60-63).
    • Intrinsic Evidence for a Narrower Interpretation: The claim's use of the functional language "for slidably engaging" could be interpreted to require that the channel be specifically designed or intended for that purpose, rather than being a general-purpose feature that could incidentally be used for sliding.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement, stating that Defendants provide product brochures, data sheets, and installation guides that instruct customers and installers to assemble and use the accused systems in an infringing manner (Compl. ¶25). It further alleges contributory infringement by stating the accused products have no other substantial non-infringing use (Compl. ¶27, ¶43).
  • Willful Infringement: While an introductory paragraph references "willful" conduct, the complaint does not include a formal count for willful infringement or plead specific facts showing pre-suit knowledge (Compl. ¶3). It does allege that Defendants had at least constructive notice of the ’362 Patent because Plaintiff marks its own products with the patent number on its website (Compl. ¶40, ¶44).

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

  • A core issue will be one of claim construction and validity: what is the proper construction of Claim 3, given that its parent claim was canceled during reexamination, and can the term "first channel...for slidably engaging" be interpreted to read on the specific geometry of the accused rails?
  • A key evidentiary question will be one of technical mapping: can Plaintiff provide sufficient evidence to demonstrate that the accused components, when assembled as instructed by Defendants, meet every limitation of the asserted claim, particularly the "slidably engaging" function that is central to Claim 3?