DCT
1:24-cv-00683
Easy Solar Products Inc v. Unirac Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Easy Solar Products, Inc. (Utah)
- Defendant: Unirac, Inc. (New Mexico)
- Plaintiff’s Counsel: Kercsmar & O’Hara PLLC; Hinkle Shanor, LLP
- Case Identification: 1:24-cv-00683, D.N.M., 07/03/2024
- Venue Allegations: Plaintiff alleges venue is proper in the District of New Mexico because Defendant is a New Mexico corporation with its principal place of business in Albuquerque, and a substantial part of the events giving rise to the claims occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s roof-mounted solar junction boxes infringe patents related to features designed for easier and faster installation.
- Technical Context: The technology concerns roof-mounted junction boxes, which are critical components for enclosing and managing wiring in residential solar panel installations.
- Key Procedural History: The complaint does not reference any prior litigation, inter partes review proceedings, or licensing history between the parties.
Case Timeline
| Date | Event |
|---|---|
| 2018-04-26 | Earliest Priority Date for ’085 and ’360 Patents |
| 2023-01-01 | Alleged Launch of Accused Product |
| 2024-06-04 | U.S. Patent No. 12,003,085 Issues |
| 2024-06-25 | U.S. Patent No. 12,021,360 Issues |
| 2024-07-03 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,003,085 - "Junction Box with a Flashing and Weep Holes"
- Patent Identification: U.S. Patent No. 12,003,085, "Junction Box with a Flashing and Weep Holes," issued June 4, 2024.
The Invention Explained
- Problem Addressed: The patent background describes challenges with installing conventional outdoor junction boxes, which can be difficult, resulting in poor attachments and inadequate integration with exterior surfaces like roofing, potentially leading to water intrusion (Compl. ¶10; ’085 Patent, col. 2:53-57).
- The Patented Solution: The invention is a roof-mounted junction box featuring a housing integrally formed with a flashing, which is designed to be layered with roofing shingles. The design includes specific features to aid installation and performance, such as a groove on the interior bottom surface to guide the creation of a wire pass-through hole, a weep hole to drain any accumulated fluid, and multiple fastener openings that include raised bosses extending from the interior bottom surface to reinforce the mounting points (’085 Patent, Abstract; col. 4:40-54).
- Technical Importance: This integrated design approach aims to simplify and accelerate the installation process for solar technicians, reducing labor costs and improving the reliability of the roof seal (Compl. ¶1).
Key Claims at a Glance
- The complaint asserts independent claims 1, 12, and 20, as well as dependent claims 2-11 and 13-19 (Compl. ¶¶20, 26).
- Independent Claim 1 Elements:
- A housing comprising sidewalls and a bottom attached to the sidewalls, the bottom having an interior side and an exterior side, the exterior side of the bottom is configured to be mounted to a roof of a structure;
- a weep hole defined in the housing;
- a flashing attached to the housing and extending horizontally from the housing, the flashing formed with the housing;
- a portion defined in the interior side of the bottom defined by a groove, the portion defining a position for creating a hole in the bottom; and
- a plurality of fastener openings in the bottom, each fastener opening configured for a fastener positionable within the fastener opening, wherein securing a fastener through a fastener opening of the plurality of fastener openings contributes to securing the housing to the roof,
- wherein each of the plurality of fastener openings in the bottom comprises a boss, each boss extending away from a bottom interior surface of the bottom.
U.S. Patent No. 12,021,360 - "Junction Box with Lid Retention System"
- Patent Identification: U.S. Patent No. 12,021,360, "Junction Box with Lid Retention System," issued June 25, 2024.
The Invention Explained
- Problem Addressed: The ’360 Patent addresses similar installation challenges as the ’085 Patent, with an added focus on managing the junction box lid and ensuring a secure, compressed seal against the roof structure (’360 Patent, col. 3:10-20).
- The Patented Solution: This invention describes a junction box with a housing composed of a top portion and a bottom portion. The bottom portion features a groove defining an area for creating a pass-through hole, flanked by anchor openings. When anchors are installed, they compress the housing against the roof. The invention also explicitly claims a lid and a "retention system" designed to keep the lid attached to the housing, preventing it from being dropped or lost during installation or maintenance on a sloped roof (’360 Patent, Abstract; col. 4:55-64).
- Technical Importance: By including a lid retention system and a design focused on compression sealing, the invention aims to improve the ease-of-use and long-term weather resistance of the junction box assembly (Compl. ¶11).
Key Claims at a Glance
- The complaint asserts independent claims 1, 8, and 14, as well as dependent claims 2-4 and 6-7, and 9-13 and 15-18 (Compl. ¶¶29, 35).
- Independent Claim 1 Elements:
- A housing comprising a top portion and a bottom portion, the top portion comprising an attachment portion, the bottom portion comprising a first portion on an exterior side of the housing and a second portion opposite the first portion, the first portion of the bottom portion configured to be mounted to a roof of a structure, the second portion comprising a groove defining an area for creating a hole in the bottom portion;
- a first anchor opening in the bottom adjacent to a first side of the area;
- a second anchor opening in the bottom adjacent to a second side of the area, wherein the housing is compressed against the roof structure in response to a first anchor being installed in the first anchor opening and/or a second anchor being installed in the second opening;
- a lid configured to be mounted on the attachment portion of the housing; and
- a retention system configured to retain the lid in proximity to the to the housing.
III. The Accused Instrumentality
Product Identification
- Defendant Unirac’s "Solobox Comp" junction box (Compl. ¶17).
Functionality and Market Context
- The complaint alleges that the Accused Product is a roof-mounted junction box for solar panel arrays that is "nearly identical" to Plaintiff’s own JB-1.2 and JB-1.XL products, which allegedly practice the patents-in-suit (Compl. ¶¶16, 18-19).
- The relevant functionality is described in terms of direct correspondence with the elements of the asserted claims, including the presence of a housing with integrated flashing, a weep hole, a groove for a pass-through hole, fastener openings with bosses, anchor openings that compress the housing, a lid, and a lid retention system (Compl. ¶¶21-25, 30-34).
- The complaint alleges the Accused Product directly competes with Plaintiff’s products (Compl. ¶18).
IV. Analysis of Infringement Allegations
No probative visual evidence provided in complaint.
’085 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing comprising sidewalls and a bottom attached to the sidewalls, the bottom having an interior side and an exterior side, the exterior side of the bottom is configured to be mounted to a roof of a structure | The Accused Product contains a housing with sidewalls and a bottom, with an interior and exterior side, configured for roof mounting. | ¶21 | col. 4:1-5 |
| a weep hole defined in the housing | The Accused Product has a weep hole defined in its housing. | ¶22 | col. 17:7-11 |
| a flashing attached to the housing and extending horizontally from the housing, the flashing formed with the housing | The Accused Product has a flashing attached to and formed with the housing that extends horizontally. | ¶23 | col. 4:2-3 |
| a portion defined in the interior side of the bottom defined by a groove, the portion defining a position for creating a hole in the bottom | The Accused Product has a portion on the interior side of the bottom defined by a groove, which defines a position for creating a hole. | ¶24 | col. 4:46-51 |
| a plurality of fastener openings in the bottom...wherein securing a fastener...contributes to securing the housing to the roof | The Accused Product has multiple fastener openings in the bottom, through which fasteners secure the housing to the roof. | ¶25 | col. 4:42-45 |
| wherein each of the plurality of fastener openings in the bottom comprises a boss, each boss extending away from a bottom interior surface of the bottom | The Accused Product's fastener openings each include a boss extending away from the bottom interior surface. | ¶25 | col. 4:50-54 |
’360 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a housing comprising a top portion and a bottom portion...the bottom portion comprising a first portion on an exterior side...and a second portion opposite...the second portion comprising a groove defining an area for creating a hole in the bottom portion | The Accused Product has a housing with top and bottom portions, where the bottom portion has an exterior side for roof mounting and an opposite interior side with a groove to define an area for a hole. | ¶30 | col. 37:25-37 |
| a first anchor opening in the bottom adjacent to a first side of the area; a second anchor opening in the bottom adjacent to a second side of the area | The Accused Product has first and second anchor openings in the bottom adjacent to the sides of the grooved area. | ¶¶31, 32 | col. 37:38-41 |
| wherein the housing is compressed against the roof structure in response to a first anchor being installed...and/or a second anchor being installed | The Accused Product's housing is compressed against the roof when anchors are installed in the anchor openings. | ¶32 | col. 37:41-45 |
| a lid configured to be mounted on the attachment portion of the housing | The Accused Product has a lid configured to be mounted on the housing's attachment portion. | ¶33 | col. 37:46-48 |
| a retention system configured to retain the lid in proximity to the to the housing | The Accused Product has a retention system to keep the lid in proximity to the housing. | ¶34 | col. 37:49-51 |
Identified Points of Contention
- Scope Questions: The complaint's allegations are conclusory and often mirror the claim language. A central question will be whether the specific structures in the "Solobox Comp" product fall within the scope of the patent claims as properly construed. For example, does the accused "retention system" perform the function of retaining the lid "in proximity to the...housing" in the manner contemplated by the ’360 Patent?
- Technical Questions: The complaint asserts that the accused product is "nearly identical" to plaintiff's commercial embodiment. A key factual dispute will be the degree of identity. For the ’085 Patent, a question may arise regarding the structure and function of the accused "boss." Is it merely a thickened area around a hole, or does it meet the structural requirements of a "boss extending away from a bottom interior surface" as depicted and described in the patent?
V. Key Claim Terms for Construction
The Term: "boss" (’085 Patent, Claim 1)
- Context and Importance: This term is a key structural limitation differentiating the claimed fastener openings from simple holes. Infringement will depend on whether the accused product's features meet the definition of a "boss." Practitioners may focus on this term because its construction will determine if a simple reinforced plastic area around a screw hole meets the limitation, or if a more distinct, separately extending structure is required.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language requires only that the boss be "extending away from a bottom interior surface of the bottom," which could be read to cover any feature with vertical relief around the opening (col. 42:52-54).
- Evidence for a Narrower Interpretation: The specification repeatedly depicts the bosses as distinct, cylindrical structures surrounding the fastener openings (e.g., ’085 Patent, Fig. 2A, element 219d; Fig. 3A, element 219b). The description further states that each boss is configured to "surround a portion of a fastener above a bottom plane" when installed, suggesting a more specific geometry and function than a mere thickening of the material (col. 4:50-54).
The Term: "retention system" (’360 Patent, Claim 1)
- Context and Importance: This term is central to the ’360 Patent's asserted novelty over prior art junction boxes. The infringement analysis for claim 1 will turn on whether the accused product's mechanism for connecting the lid and housing constitutes a "retention system."
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The claim language is functional and broad, requiring only that the system is "configured to retain the lid in proximity to the to the housing" (col. 42:49-51). The specification also discusses various embodiments, including a "chord, a strap, a rope, a band, a bungee cord, a hinge or any other appropriate device" (col. 20:50-53).
- Evidence for a Narrower Interpretation: Dependent claim 2 explicitly recites that the retention system "comprises a hinge" (col. 42:52-55). A defendant may argue this suggests the independent claim should not be construed so broadly as to automatically cover any hinge, or that specific types of hinges are what is contemplated. Figure 22A of the patent depicts a specific type of hinge mechanism as an embodiment of the retention system.
VI. Other Allegations
- Indirect Infringement: The complaint alleges inducement and contributory infringement by incorporating by reference Exhibits 1 and 2, which are not included in the filing (Compl. ¶¶27, 36). The complaint does not plead specific facts to support the knowledge and intent elements required for these claims.
- Willful Infringement: The complaint does not contain a specific count for willful infringement or allege facts regarding pre- or post-suit knowledge of the patents. However, the prayer for relief requests attorneys' fees "due to the brazenness of Unirac's infringement," which suggests an intent to pursue a finding of egregious conduct (Compl. p. 13).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: how will the court define the structural term "boss" in the ’085 Patent and the functional term "retention system" in the ’360 Patent? The breadth of these definitions will be critical in determining the scope of the claims and whether the accused product infringes.
- A key evidentiary question will be one of factual comparison: The complaint’s allegations of infringement are highly conclusory and rely on the assertion that the accused product is "nearly identical" to Plaintiff's. The case will likely depend on a detailed, element-by-element comparison of the accused "Solobox Comp" against the construed claims, moving beyond broad allegations to specific evidence of technical operation and structure.