DCT
1:22-cv-01113
Sade v. SP Butler Solar LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Rovshan Sade (North Carolina)
- Defendant: SP Butler Solar LLC (Delaware)
- Plaintiff’s Counsel: Pro Se
- Case Identification: 1:22-cv-01113, 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 within the Middle District of North Carolina and has committed the alleged acts of infringement in the district.
- Core Dispute: Plaintiff alleges that Defendant’s solar power project utilizes solar trackers that infringe two patents related to solar tracker design and construction.
- Technical Context: The technology involves single-axis solar trackers, which are mechanical systems designed to orient photovoltaic panels toward the sun throughout the day to increase energy capture compared to fixed-mount systems.
- Key Procedural History: The complaint states that on August 19, 2022, Plaintiff sent letters to Defendant providing notice of the patents-in-suit and the alleged infringement, to which Defendant allegedly did not respond.
Case Timeline
| Date | Event |
|---|---|
| 2010-07-06 | Priority Date for U.S. Patent Nos. 9,057,546 & 9,917,546 |
| 2015-06-16 | U.S. Patent No. 9,057,546 Issued |
| 2018-03-13 | U.S. Patent No. 9,917,546 Issued |
| 2022-08-19 | Plaintiff sends notice of infringement letters |
| 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's background identifies the high cost, space requirements, and aesthetic concerns of conventional solar systems as impediments to their widespread adoption (’546 Patent, col. 1:22-34). It notes that fixed-position panels are inherently limited in their ability to maximize energy generation.
- The Patented Solution: The invention is a free-standing solar tracker that does not require a permanent foundation (’546 Patent, col. 1:47-49). The system is designed around a base that can be filled with ballast material (e.g., sand, gravel) to hold it in place, and which can also serve as a "suitcase" to contain the tracker's components for transport (’546 Patent, Abstract; col. 2:27-33). This design aims to provide a portable, easily deployable, and relatively inexpensive system that increases energy output by tracking the sun's movement (’546 Patent, col. 1:51-57).
- Technical Importance: The technology proposes a non-permanent, portable solution for improving the efficiency of solar panels, potentially making solar tracking more accessible for residential or temporary commercial applications.
Key Claims at a Glance
- The complaint asserts independent claim 5 (Compl. ¶39).
- Essential elements of claim 5 include:
- a support frame;
- 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;
- 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; and
- an actuator assembly for rotating the panel assembly to track the movement of the sun.
- The complaint states that Defendant infringes one or more claims of the ’546 Patent, reserving the right to assert additional claims (Compl. ¶38).
U.S. Patent No. 9,917,546, "Solar Tracker" (Issued March 13, 2018)
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’546 Patent, this patent addresses the same technical problems: the cost, installation complexity, and inefficiency of conventional, fixed-position solar panel systems (’17546 Patent, col. 1:28-44).
- The Patented Solution: The invention described is functionally identical to that of the parent ’546 Patent, detailing a free-standing solar tracker with a ballast-holding base designed for portability and easy deployment without a foundation (’17546 Patent, Abstract; col. 2:35-41). The core components include a support frame, a rotatable panel assembly with a central spine, and an actuator to follow the sun's azimuth (’17546 Patent, col. 2:30-35).
- Technical Importance: The invention aims to provide a transportable and foundation-less solar tracking system to improve energy output and return on investment.
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶58).
- Essential elements of claim 1 include:
- a support frame;
- a panel assembly rotatably mounted to said support frame, 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;
- an actuator assembly for rotating the panel assembly to track the movement of the sun;
- a mounting assembly for rotatably mounting the panel assembly to the support frame, comprising a mounting member configured to be rotatably connected to said support frame and an open-ended slot in said mounting member configured to receive the central spine.
- The complaint states that Defendant infringes one or more claims of the ’17546 Patent, reserving the right to assert additional claims (Compl. ¶57).
III. The Accused Instrumentality
Product Identification
The complaint identifies the accused instrumentalities as "solar trackers" used in a solar energy facility owned and operated by the Defendant (Compl. ¶23-24, ¶37). No specific manufacturer or model name is provided.
Functionality and Market Context
The accused trackers are alleged to be part of a utility-scale "solar project" that generates electricity (Compl. ¶23). Their function is to rotate solar panels to track the sun's movement to maximize energy production (Compl. ¶41, ¶59). The complaint alleges the trackers include a "plurality of support posts" forming a support frame, a "torque tube beam" acting as a central spine, "panel carriers" for the solar panels, a "bearing assembly" for mounting, and an "electromechanical actuator" for rotation (Compl. ¶42-45, ¶60-63). A photograph in the complaint shows the accused support posts appearing to be installed in the ground (Compl. p. 8). The complaint alleges Defendant uses these trackers to provide solar energy to its customers, including utilities (Compl. ¶26).
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 | A plurality of support posts forming a support frame. A provided image depicts these posts. (Compl. p. 8). | ¶42 | col. 2:57-58 |
| 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 | A structure with a central "torque tube beam" (central spine) and transversely arranged "elongated members" (panel carriers). A provided image illustrates these components. (Compl. p. 8). | ¶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 | A "bearing assembly" that mounts on the support posts, which includes an "inner bearing race" that functions as a mounting member. This inner bearing race is alleged to have an "open beam slot" to receive the torque tube beam. An image of this assembly is provided. (Compl. p. 9). | ¶44 | col. 4:6-9 |
| an actuator assembly for rotating the panel assembly to track the movement of the sun | An "electromechanical actuator" used for rotating the panel assembly. An image of the actuator is provided. (Compl. p. 9). | ¶45 | col. 4:18-20 |
’17546 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a support frame | A plurality of support posts that form a support frame. An image shows these posts. (Compl. p. 13). | ¶60 | col. 2:66-col. 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 | A frame that includes a "torque tube beam" as a central spine and transversely arranged "elongated members" as panel carriers, on which panels are clipped. An image shows the alleged spine and carriers. (Compl. p. 13). | ¶61 | col. 3:35-42 |
| an actuator assembly for rotating the panel assembly to track the movement of the sun | An "electromechanical actuator" for rotating the panel assembly. An image of this component is included. (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 configured to be rotatably connected to said support frame; and an open-ended slot in said mounting member configured to receive the central spine of the panel assembly | A "bearing assembly" that functions as the mounting assembly, which includes an "inner bearing race" as the mounting member. This inner race is alleged to include an "open beam slot" for the torque tube. The complaint provides a photograph explicitly labeled "Open-ended slot." (Compl. p. 15). | ¶63 | col. 4:9-13 |
- Identified Points of Contention:
- Scope Questions: Both asserted patents heavily describe a "free-standing" invention that "requires no foundation" and can be transported in a "suitcase" base (’546 Patent, col. 1:47-49; ’17546 Patent, col. 2:35-38). The accused trackers, however, are alleged to be part of a large-scale project with support posts that appear to be permanently installed in the ground (Compl. p. 8, p. 13). A central question will be whether the scope of the claims, which do not explicitly recite a "base" or "portability," can be limited by the specification's consistent characterization of the invention as free-standing and portable.
- Technical Questions: The infringement allegations map the claimed "mounting member" to an "inner bearing race" within a "bearing assembly" (Compl. ¶44, ¶63). The patents, in contrast, disclose embodiments like "mounting forks" and "L-shaped mounting brackets" (’546 Patent, col. 4:2, col. 3:50). A dispute may arise over whether the accused "inner bearing race" is structurally and functionally equivalent to the "mounting member" taught and claimed in the patents.
V. Key Claim Terms for Construction
The Term: "support frame"
- Context and Importance: This term's construction is critical because the patents’ specifications consistently describe the "support frame" as mounting to a portable, non-permanent, ballast-filled base (’546 Patent, col. 2:57). The accused device is alleged to use support posts that appear to be permanently installed in the ground (Compl. p. 8). Whether the claim term is limited to the portable context of the specification or can read on permanent installations will be a pivotal issue for infringement.
- Intrinsic Evidence for a Broader Interpretation: The plain language of the asserted claims does not include limitations requiring the "support frame" to be portable, foundation-less, or mounted to a specific type of base.
- Intrinsic Evidence for a Narrower Interpretation: The "Summary" and "Detailed Description" sections repeatedly characterize the invention as a "free-standing solar tracker" that "requires no foundation" (’546 Patent, col. 1:43-49). A party may argue that these consistent descriptions of the invention as a whole should inform and limit the scope of the term "support frame" to non-permanent structures.
The Term: "mounting member"
- Context and Importance: This term defines the key interface between the rotating panel assembly and the stationary support frame. The complaint alleges that an "inner bearing race" in a "bearing assembly" is the "mounting member" (Compl. ¶44, ¶63). Practitioners may focus on this term because the patent illustrates more specific structures, such as "mounting forks" and "connecting plate[s]" (’546 Patent, Fig. 5-7), raising a question of structural equivalence.
- Intrinsic Evidence for a Broader Interpretation: The term "mounting member" is generic. The specification's use of more specific examples like "mounting forks 94" (’546 Patent, col. 4:2) could be interpreted as exemplary embodiments rather than limitations on the broader term used in the claims.
- Intrinsic Evidence for a Narrower Interpretation: The specification describes the "mounting member" (e.g., "mounting forks 94") as having a "slot 95" to receive the spine (’546 Patent, col. 4:6-9). A party could argue that the term should be construed to require a fork-like or bracket-like structure as depicted, and not a different mechanism such as an "inner bearing race," which may be argued to operate on a different principle.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that Defendant actively encourages its customers and other third parties to use the infringing trackers (Compl. ¶47, ¶65). The factual basis for this includes allegations of Defendant "designing specifications," "collaborating on...development," and providing "technical support services" for the infringing systems (Compl. ¶26-27).
- Willful Infringement: The willfulness claim is predicated on alleged pre-suit knowledge of the patents. The complaint alleges that Defendant knew of the patents and their infringement "at least as early as August 19, 2022," the date of Plaintiff's notice letters (Compl. ¶46, ¶64). The complaint further alleges that Defendant's continued infringement despite this notice is "knowing, deliberate, and willful" (Compl. ¶49, ¶67).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope: can the claims, which originate from a patent specification that pervasively describes a portable, foundation-less solar tracker, be properly construed to cover the large-scale, apparently permanent solar trackers used in Defendant's commercial power project?
- A key evidentiary question will be one of structural correspondence: does the accused tracker's "bearing assembly," which incorporates an "inner bearing race," constitute the "mounting member" with a "slot" as required by the asserted claims, or is there a fundamental mismatch between the accused structure and the specific embodiments disclosed in the patents?