DCT
1:21-cv-08766
FCX Solar LLC v. FTC Solar Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: FCX Solar, LLC (Pennsylvania)
- Defendant: FTC Solar, Inc. (Delaware)
- Plaintiff’s Counsel: Perkins Coie LLP
- Case Identification: 6:21-cv-00548, W.D. Tex., 07/27/2021
- Venue Allegations: Plaintiff alleges venue is proper in the Western District of Texas because Defendant maintains a regular and established place of business in the district, specifically citing office locations in Austin, Texas.
- Core Dispute: Plaintiff alleges that Defendant’s Voyager line of solar tracker systems infringes a patent related to a passive, variable-damping mechanism designed to mitigate wind-induced oscillations in solar arrays.
- Technical Context: The technology relates to mechanical systems for large-scale solar trackers, which increase energy output by orienting photovoltaic panels toward the sun throughout the day.
- Key Procedural History: The complaint alleges that the defendant, FTC Solar, previously held a license to the patent family that includes the patent-in-suit. This license was allegedly terminated by the defendant "for convenience" shortly before the lawsuit was filed. This prior relationship is central to the plaintiff's allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2018-02-13 | Earliest Priority Date for ’782 Patent |
| 2019-04-24 | Accused "Voyager" product video published |
| 2020-07-22 | Alleged date of Defendant's damper sample tests |
| 2020-07-25 | Alleged date of Defendant's damper design images |
| 2021-01-26 | ’782 Patent issues |
| 2021-01-27 | Accused "Voyager+" product launch announced |
| 2021-04-30 | Defendant terminates prior license agreement |
| 2021-07-27 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,903,782 - “Solar Tracker System,” issued January 26, 2021
The Invention Explained
- Problem Addressed: The patent's background describes how large-scale solar arrays, often using a single actuator to tilt long rows of panels, are susceptible to environmental forces like wind. This "environmental loading" can cause the rows to twist, which can lead to system failure, reduce energy generation, and increase costs due to the need for stronger components or more complex designs (’782 Patent, col. 1:36-49).
- The Patented Solution: The invention proposes a solar tracker system incorporating a damper that passively changes its resistance based on the speed of movement. The damper provides low resistance for the slow, deliberate movements required to track the sun, but provides high resistance to counteract rapid, undesirable movements caused by wind gusts. This is achieved through a specific mechanical design, such as a piston with multiple ports and a valve that automatically restricts fluid flow at higher speeds without needing an electronic controller (’782 Patent, Abstract; col. 3:1-33; Figs. 2B-2C).
- Technical Importance: By providing a passive, variable damping mechanism, the invention aims to allow for the construction of longer, more cost-effective solar panel rows that are more resilient to wind loading, without the added cost and potential failure points of active electronic control systems (’782 Patent, col. 4:40-61).
Key Claims at a Glance
- The complaint asserts independent claims 1, 11, and 19 (Compl. ¶69).
- Independent Claim 1: A photovoltaic system comprising:
- a collection of photovoltaic modules;
- a base supporting the modules;
- a damper coupled between the modules and the base;
- the damper has a first damping ratio for a first (slower) rate of movement and a second, greater damping ratio for a second (faster) rate;
- the damper passively transitions between the two ratios; and
- the damper includes a chamber with fluid, a piston, a first port, a second port, and a valve configured to passively open or close the second port.
- Independent Claim 11: A photovoltaic system comprising the elements of claim 1, but also explicitly including an actuator configured to move the photovoltaic modules. The damper limitations are substantially identical to those in claim 1.
- Independent Claim 19: A photovoltaic system with claim elements substantially identical to claim 1, describing the same collection of modules, base, and damper with a passive transition between a first damping ratio and a higher second damping ratio, and the same internal structure of a piston, two ports, and a passive valve.
III. The Accused Instrumentality
Product Identification
- Defendant’s “Voyager” and “Voyager+” solar tracker systems (Compl. ¶24, ¶25).
Functionality and Market Context
- The complaint alleges the Voyager systems are single-axis solar trackers sold for use in large-scale solar power generation (Compl. ¶2). A key feature of the accused products is a "patented locking damper design" which allegedly enables the system "to handle the most adverse wind conditions" (Compl. ¶28). The complaint alleges this damper is mounted between the solar modules and the base and "passively transitions from a first damping ratio...to a second, higher damping ratio" depending on the velocity of the modules (Compl. ¶28, ¶29). The products are marketed with an emphasis on low installation costs (Compl. ¶63).
IV. Analysis of Infringement Allegations
’782 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| a collection of photovoltaic modules; | The Voyager system incorporates solar panels, which are collections of photovoltaic modules. | ¶24 | col. 2:6-7 |
| a base supporting the collection of photovoltaic modules; | The Voyager system includes a supporting base with a vertical post to which modules are attached. | ¶27 | col. 2:9-11 |
| a damper coupled between the collection of photovoltaic modules and the base and resisting movement... | The Voyager system includes a damper mounted between the solar modules and the base to resist movement caused by wind. | ¶28 | col. 2:56-59 |
| the damper having a first damping ratio... and a second damping ratio... wherein the damper passively transitions... | The Voyager damper allegedly passively transitions from a first damping ratio at a first velocity to a second, higher damping ratio at a second, higher velocity. This is allegedly evidenced by Defendant's own sample tests. | ¶29, ¶30 | col. 3:20-33 |
| the damper comprising: a damper chamber containing a fluid; | The accused damper has an outer cylinder (damper chamber) that is hollow and contains fluid. | ¶32 | col. 3:57-59 |
| a damper piston movable through the fluid inside the damper chamber, the damper piston including: | The accused damper's outer cylinder holds a damper piston. | ¶32 | col. 3:60-62 |
| a first port; a second port; | The damper piston of the Voyager product allegedly has a first port and a second port, described as openings on a disc. The complaint references damper design images, allegedly in Defendant's possession, as evidence of the accused damper's internal structure (Compl. ¶33). | ¶34, ¶36 | col. 3:62-64 |
| a valve, configured to passively open or close the second port. | The damper piston of the Voyager product allegedly has a valve configured to passively open or close the second port, with the valve transitioning between open and closed configurations in a passive manner. | ¶38, ¶40 | col. 4:1-19 |
Identified Points of Contention
- Scope Questions: A central dispute may arise over the definition of the claim term "valve." The infringement case depends on whether the accused damper's mechanism for restricting flow meets the specific structural requirement of "a valve, configured to passively open or close the second port," or if it uses a different structure to achieve variable damping.
- Technical Questions: A key factual question will be what the internal mechanism of the accused Voyager damper actually is and how it functions. The complaint's allegations rely heavily on "damper sample tests" and "damper design images" that are said to be in the defendant's possession (Compl. ¶30, ¶33). The evidence produced in discovery regarding these materials will be critical to substantiating the claim that the accused product has the specific two-port-and-valve structure recited in the patent.
V. Key Claim Terms for Construction
The Term: "passively transitions" / "passively open or close"
- Context and Importance: This concept is central to the patent's claimed novelty. The infringement analysis for all asserted claims will depend on whether the accused damper's method for changing its damping force is "passive" as construed by the court. Practitioners may focus on this term because it distinguishes the invention from systems requiring active electronic control.
- Intrinsic Evidence for a Broader Interpretation: The specification suggests "passive" primarily means operation independent of the system's main controller: "The damping ratio may therefore be adjusted without active control by, for example, the controller 130" (’782 Patent, col. 4:42-45). This could support a construction that includes any mechanism responsive to fluid dynamics, not just the depicted embodiment.
- Intrinsic Evidence for a Narrower Interpretation: The description of the embodiment focuses on a specific mechanical action: "At higher speeds, the valve 220 is pushed closed and the fluid is forced through the smaller diameter port 215A" (’782 Patent, col. 4:11-13). This could support an argument that "passive" requires a specific type of velocity-actuated mechanical valve, as opposed to, for example, a system using non-Newtonian fluids to achieve a similar effect.
The Term: "a valve"
- Context and Importance: All asserted independent claims require "a valve." The physical presence and nature of this component in the accused device will be a dispositive fact. If the accused device achieves variable damping without a structure that meets the definition of "a valve," the infringement claim may fail.
- Intrinsic Evidence for a Broader Interpretation: The claims use the general term "a valve" without further structural limitation beyond being configured to passively open or close a port. This may support a construction covering any structure that performs the function of regulating fluid flow in response to velocity.
- Intrinsic Evidence for a Narrower Interpretation: The patent consistently illustrates the valve as a distinct component (220) that physically moves to block a port (Figs. 2B, 2C). A party could argue that the term "valve" should be limited to such a structure, and would not read on a system that, for instance, uses fixed orifices where the "transition" is purely a result of fluid mechanics without a distinct, moving valve component.
VI. Other Allegations
Indirect Infringement
- The complaint alleges both inducement and contributory infringement. The inducement claim is based on allegations that FTC provides customers with the Voyager systems along with extensive training, engineering services, and instructions on how to assemble and use them to create an infringing photovoltaic system (Compl. ¶78). The contributory infringement claim is based on allegations that the Voyager trackers are a material component of the invention with no substantial non-infringing use, as they are specifically designed to be combined with photovoltaic modules to create a solar tracking system (Compl. ¶87).
Willful Infringement
- The complaint alleges a strong factual basis for willfulness. It asserts that FTC was a former licensee of the patent's family, was "contractually obligated to be aware" of the patent, terminated its license, and continued to sell the allegedly infringing products (Compl. ¶4, ¶20, ¶72). This alleges pre-suit knowledge of the patent and the conduct at issue.
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim construction: how will the court define the scope of "passively transitions" and the structural requirements of "a valve"? The outcome will likely depend on whether these terms are construed broadly to cover any non-controller-based variable damping, or narrowly limited to the specific velocity-actuated mechanical valve embodiment described in the patent.
- A key evidentiary question will be one of technical operation: does the accused Voyager damper function using the specific two-port, one-valve piston structure recited in the asserted claims, or does it achieve a similar result through a different, non-infringing design? Discovery of the "damper design images" and test data referenced in the complaint will be central to resolving this factual dispute.
- Given the defendant's status as a former licensee, a significant question for damages will be the character of the infringement: do the facts surrounding the license termination and subsequent sales rise to the level of willful infringement, which could expose the defendant to enhanced damages under 35 U.S.C. § 284?