DCT
1:22-cv-01109
Sade v. North Star Solar LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rovshan Sade (North Carolina)
- Defendant: North Star Solar LLC (Delaware)
- Plaintiff’s Counsel: Pro Se
- Case Identification: 1:22-cv-01109, M.D.N.C., 12/20/2022
- Venue Allegations: Venue is alleged to be proper because Defendant has a regular and established place of business in the Middle District of North Carolina and has committed the alleged acts of infringement within the district.
- Core Dispute: Plaintiff alleges that solar tracker systems used in Defendant's solar power facility infringe two patents related to the mechanical design and structure of solar trackers.
- Technical Context: The patents relate to single-axis solar trackers, which are mechanical systems designed to orient photovoltaic panels toward the sun throughout the day to maximize energy capture.
- Key Procedural History: The complaint alleges Plaintiff provided Defendant with pre-suit notice of infringement on August 19, 2022, via letters that identified the patents-in-suit and offered a license. The '17546 patent is a continuation of the application that issued as the '546 patent, indicating a direct prosecution lineage between the two asserted patents.
Case Timeline
| Date | Event |
|---|---|
| 2010-07-06 | Priority Date for ’546 and ’17546 Patents |
| 2015-06-16 | ’546 Patent Issued |
| 2018-03-13 | ’17546 Patent Issued |
| 2022-08-19 | Plaintiff Sends Pre-Suit Notice to Defendant |
| 2022-12-20 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 9,057,546, "Solar Tracker," issued June 16, 2015
The Invention Explained
- Problem Addressed: The patent describes conventional solar systems as facing impediments to adoption due to high cost, the need for large, open spaces, and "aesthetically unappealing" designs that require permanent installation on roofs or foundations (’546 Patent, col. 1:23-39).
- The Patented Solution: The patent discloses a "free-standing solar tracker" that does not require a foundation (’546 Patent, col. 1:53-54). Its key feature is a base that forms an "open pan" designed to hold ballast material (e.g., sand, gravel) to secure the tracker in place. This base is also designed to function as a "suitcase" to contain and transport the tracker's disassembled components, enhancing portability (’546 Patent, Abstract; col. 2:27-32). A panel assembly is rotatably mounted on a support frame to track the sun.
- Technical Importance: This design aims to lower installation costs and increase deployment flexibility by eliminating the need for a permanent foundation, allowing the tracker to be moved between sites and installed in various locations with adequate sun exposure (’546 Patent, col. 2:48-51, 2:60-65).
Key Claims at a Glance
- The complaint asserts independent claim 5 (Compl. ¶39).
- The essential elements of independent claim 5 are:
- a support frame;
- a panel assembly rotatably mounted to the support frame, comprising a central spine and a plurality of panel carriers;
- a mounting assembly for rotatably mounting the panel assembly, comprising a mounting member with a slot configured to receive the spine; and
- an actuator assembly for rotating the panel assembly.
- The complaint reserves the right to assert other claims of the patent (Compl. ¶38).
U.S. Patent No. 9,917,546, "Solar Tracker," issued March 13, 2018
The Invention Explained
- Problem Addressed: As a continuation, this patent addresses the same problems as its parent: the cost, space requirements, and aesthetic drawbacks of conventional, fixed-position solar panel installations (’17546 Patent, col. 1:30-41). The complaint reiterates that prior art systems were inefficient and could not harness the full energy capacity of the panels (Compl. ¶54).
- The Patented Solution: The invention is a "support structure for a solar tracker" that includes a panel assembly with a central spine and panel carriers extending from "both sides" of the spine (’17546 Patent, Claim 1). The structure is mounted for rotation via a mounting assembly that features a mounting member with an "open-ended slot" configured to receive the central spine (’17546 Patent, Claim 1).
- Technical Importance: The claimed invention focuses on a specific structural arrangement for rotatably mounting a large panel assembly, with particular emphasis on the interface between the central spine and the support frame.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶58).
- The essential elements of independent claim 1 are:
- a support frame;
- a panel assembly with a central spine and panel carriers fixed relative to the spine and extending from both sides;
- an actuator assembly; and
- a mounting assembly, comprising a mounting member with an "open-ended slot" for receiving the central spine.
- The complaint reserves the right to assert other claims of the patent (Compl. ¶57).
III. The Accused Instrumentality
- Product Identification: The complaint accuses "solar trackers" used by Defendant at a "solar energy facility" or "solar project" (Compl. ¶23, 37). The specific manufacturer or model of the accused trackers is not identified.
- Functionality and Market Context: The accused instrumentalities are described as solar trackers that "rotate solar panels in accordance with the movement of the sun during the day to maximize energy production" (Compl. ¶41, 59). The complaint alleges that Defendant uses these infringing trackers to provide solar energy to its customers, including private and public utilities (Compl. ¶26). The complaint provides an annotated photograph of the accused trackers, identifying a "Torque Tube" and "Panel Carriers" (Compl. p. 8). Another annotated photograph shows the "Bearing Assembly" that allegedly constitutes the infringing mounting assembly (Compl. p. 9).
IV. Analysis of Infringement Allegations
’546 Patent Infringement Allegations
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a support frame | The accused trackers include a "plurality of support posts forming a support frame," as depicted in an annotated photograph. | ¶42 | col. 2:56-58 |
| a panel assembly rotatably mounted to the support frame for supporting one or more solar panels, said panel assembly comprising a central spine and a plurality of panel carriers extending outwardly from said spine | The accused trackers allegedly have a rotatable panel assembly where a "torque tube beam" serves as the central spine and "transversely arranged elongated members" serve as the panel carriers. | ¶43 | col. 3:24-34 |
| a mounting assembly for rotatably mounting the panel assembly to the support frame, the mounting assembly comprising a mounting member rotatably connected to the support frame and a slot in said mounting member configured to receive the spine of the panel assembly | The complaint alleges the accused trackers use a "bearing assembly" that includes an "inner bearing race," which functions as the mounting member. This inner race is alleged to include an "open beam slot" that receives the torque tube (spine). | ¶44 | col. 4:47-59 |
| an actuator assembly for rotating the panel assembly to track the movement of the sun | Defendant's trackers are alleged to use an "electromechanical actuator" to rotate the panel assembly, a component identified in a photograph. | ¶45 | col. 4:18-21 |
’17546 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a support frame | The accused trackers allegedly include a plurality of "support posts" that form the support frame. | ¶60 | col. 2:66-3:1 |
| a panel assembly rotatably mounted to said support frame ... said panel assembly including a central spine rotatably mounted to the support frame and a plurality of panel carriers fixed relative to the central spine and extending outwardly from both sides of said central spine for supporting said solar panels | The accused trackers' frame allegedly includes a "torque tube beam" as the central spine and "transversely arranged elongated members" as panel carriers, to which panels are clipped. An annotated photograph shows these panel carriers (Compl. p. 13). | ¶61 | col. 3:37-48 |
| an actuator assembly for rotating the panel assembly to track the movement of the sun | An "electromechanical actuator" is used for rotating the panel assembly, as shown in an annotated photograph (Compl. p. 14). | ¶62 | col. 4:31-33 |
| a mounting assembly for rotatably mounting the panel assembly to the support frame, said mounting assembly comprising: a mounting member ... and an open-ended slot in said mounting member configured to receive the central spine of the panel assembly | The accused trackers allegedly use a "bearing assembly" as the mounting assembly. This includes an "inner bearing race" (the mounting member) with an "open beam slot" where the torque tube is seated. A photograph is provided specifically annotating an "Open-ended slot" (Compl. p. 15). | ¶63, p. 15 | col. 4:12-14 |
- Identified Points of Contention:
- Scope Questions: A central question may be whether the term "support frame," as used in the claims, is limited by the patent's detailed description of a "free-standing" system that uses a ballast pan and requires no foundation (’546 Patent, Abstract). The complaint's photographs depict what appears to be a large-scale, ground-mounted system, raising the question of whether such a system falls within the scope of claims originating from a patent focused on portability.
- Technical Questions: The infringement theory for both patents maps the claimed "mounting assembly" and "mounting member" to the accused tracker's "bearing assembly" and "inner bearing race" (Compl. ¶44, 63). A point of contention may be whether the structure and function of the accused bearing race, a rotational component, corresponds to the claimed "mounting member" with a "slot," which the patent specification illustrates as a set of mounting forks or brackets (’546 Patent, Fig. 7).
V. Key Claim Terms for Construction
The Term: "support frame" (asserted in both patents)
- Context and Importance: The construction of this term is critical because the patents' specifications heavily emphasize a "free-standing" and portable design with a ballast-holding base that requires no foundation (’546 Patent, col. 1:53-54). The accused product appears to be a large, seemingly permanent installation. Practitioners may focus on this term because its construction could determine whether the claims are limited to the portable embodiment or can read on the accused utility-scale systems.
- Intrinsic Evidence for a Broader Interpretation: The claims do not recite a "base," "ballast," or any limitation requiring a "free-standing" configuration. The term "support frame" itself is general. A party may argue that the specification's description of a ballast-based system is merely a preferred embodiment and should not be imported into the claims.
- Intrinsic Evidence for a Narrower Interpretation: The "Summary" sections of both patents state, "The solar tracker is designed to be free-standing and requires no foundation" (’546 Patent, col. 1:53-54; ’17546 Patent, col. 2:54-55). This language, presented as a summary of the invention itself, could be used to argue that the "support frame" is implicitly a component of such a free-standing system.
The Term: "open-ended slot" (’17546 Patent, Claim 1)
- Context and Importance: This term appears in the independent claim of the continuation patent and is a key structural limitation of the mounting assembly. The complaint provides a photograph explicitly labeling this feature on the accused device (Compl. p. 15). Its construction will be central to determining infringement of the ’17546 patent.
- Intrinsic Evidence for a Broader Interpretation: The patent specification describes the slot (95) in the context of mounting forks (94) that receive the spine (’17546 Patent, col. 4:12-14, Fig. 7). Plaintiff will likely argue that the accused "open beam slot" in the "inner bearing race" (Compl. ¶63) is structurally equivalent to the disclosed U-shaped slot and that "open-ended" plainly means not fully enclosed, a condition met by the accused device.
- Intrinsic Evidence for a Narrower Interpretation: A party may argue that the "open-ended slot" must be construed in light of the embodiment shown: a U-shaped slot in a non-rotating mounting fork. This could be contrasted with the accused device, where the slot is part of a rotating "inner bearing race," potentially creating a structural and functional distinction.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating Defendant encourages its customers and other third parties to use the infringing trackers by, among other things, designing specifications for their use, providing technical support, and facilitating their operation and maintenance (Compl. ¶26, 27, 47, 65).
- Willful Infringement: Willfulness is alleged based on pre-suit knowledge from letters sent by Plaintiff to Defendant on August 19, 2022 (Compl. ¶29). The complaint alleges that Defendant's continued infringement after receiving notice of the patents and the infringement allegations was "knowing, deliberate, and willful" and constituted an "unjustifiably high risk of infringement" (Compl. ¶49, 67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of definitional scope: Can the term "support frame," which is described in the patents' shared specification primarily in the context of a portable, ballast-based system, be construed to cover the large-scale, apparently fixed-foundation solar array operated by the Defendant?
- A key infringement question will be one of structural correspondence: Does the accused tracker's "inner bearing race" with an "open beam slot" meet the structural and functional requirements of the claimed "mounting member" with a "slot" ('546 patent) and, more specifically, an "open-ended slot" ('17546 patent), or is there a material difference between the accused rotational bearing and the patents' disclosed mounting bracket embodiments?
- A central question for damages will be the sufficiency of notice: Did the alleged pre-suit letters of August 19, 2022, provide knowledge of infringement sufficient to support a finding of willful conduct for all infringing acts that occurred thereafter?