DCT

2:25-cv-00565

Unirac Inc v. Easy Solar Products Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:25-cv-00565, D. Utah, 07/14/2025
  • Venue Allegations: Venue is alleged to be proper in the District of Utah because Defendant is a Utah corporation with its principal place of business in the district, and therefore resides there.
  • Core Dispute: Plaintiff alleges that Defendant’s rooftop solar junction boxes infringe four utility patents and two design patents related to weatherproof enclosures with integrated flashing.
  • Technical Context: The technology concerns specialized weatherproof enclosures for rooftop solar installations, designed to simplify installation and improve water resistance by integrating flashing and positioning the housing to avoid cutting roof shingles.
  • Key Procedural History: The complaint alleges Defendant had knowledge of three of the asserted utility patents since at least October 2022, having cited them in Information Disclosure Statements (IDS) during the prosecution of its own patents. Plaintiff also alleges it served Defendant with a formal notice of infringement, including claim charts, on June 30, 2025, prior to filing the lawsuit.

Case Timeline

Date Event
2018-07-09 Priority Date for ’121, ’685, ’288, ’592 Patents
2020-03-11 Priority Date for D199 Patent
2020-03-17 U.S. Patent No. 10,594,121 Issued
2020-10-13 U.S. Patent No. 10,804,685 Issued
2021-07-XX Accused Products Allegedly Made Publicly Available
2021-07-26 Priority Date for D279 Patent
2022-05-31 U.S. Patent No. 11,349,288 Issued
2022-10-03 Easy Solar Allegedly Cites ’121, ’685, ’288 Patents in an IDS
2022-10-11 U.S. Patent No. D966,199 Issued
2024-02-20 U.S. Patent No. D1,015,279 Issued
2024-08-20 U.S. Patent No. 12,068,592 Issued
2025-06-30 Formal Notice of Infringement Allegedly Served on Defendant
2025-07-14 Complaint Filed

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

U.S. Patent No. 10,594,121 - “Weatherproof Multipurpose Enclosure With Integrated Flashing”

Issued March 17, 2020

The Invention Explained

  • Problem Addressed: The patent describes the difficulty of installing enclosures for electrical components, such as solar junction boxes, on shingled roofs. Prior methods often required installers to cut roofing shingles to fit the enclosure, a step that increases installation time and creates a risk of improper sealing, potentially leading to water damage. (’121 Patent, col. 1:47-61).
  • The Patented Solution: The invention is an enclosure assembly featuring a base with an integrated flashing and a raised portion for housing components. The key design feature is that the raised portion is "disposed off-center," which leaves a large, uncovered "uphill portion" of the flashing. This configuration allows the uphill portion to slide under a full course of existing shingles without any cutting, thereby simplifying installation and enhancing water protection. (’121 Patent, Abstract; col. 2:4-20).
  • Technical Importance: This design aimed to reduce both the time and skill required for installing rooftop solar components, addressing a key bottleneck and potential failure point in the growing residential solar market. (’121 Patent, col. 2:15-20).

Key Claims at a Glance

  • The complaint asserts claims 22-24, with claim 22 being the sole independent method claim (Compl. ¶39).
  • The essential steps of independent claim 22 include:
    • providing a base with a bottom wall and a raised portion that is off-center, leaving an uncovered portion of the bottom wall;
    • positioning the uncovered portion of the bottom wall beneath a roof shingle on the rooftop;
    • applying a sealant to the lower surface of the bottom wall to form a sealed area;
    • mounting the base to the rooftop using at least one base fastener disposed within the raised portion; and
    • joining a cover to the base using a plurality of cover fasteners.
  • The complaint reserves the right to assert other claims, which would include dependent claims 23 and 24.

U.S. Patent No. 10,804,685 - “Weatherproof Multipurpose Enclosure With Integrated Flashing”

Issued October 13, 2020

The Invention Explained

  • Problem Addressed: This patent, from the same family as the ’121 patent, also addresses the need for reliable, easy-to-install weatherproof enclosures. It further identifies potential issues with fasteners, which can rust or create leak points, and the need to position internal components correctly within the protected space. (’685 Patent, col. 2:33-46).
  • The Patented Solution: The invention is an enclosure assembly comprising a base with a raised portion and a cover. The patent details the use of specific "location markers" (e.g., dimples, bosses, or impressions) within the enclosed interior space. These markers guide the installer for securing the base to the roof or for mounting accessories like a DIN rail, ensuring that all roof penetrations are made inside the area protected by the enclosure and sealant. (’685 Patent, Fig. 3B; col. 6:26-46).
  • Technical Importance: By pre-defining attachment points inside the enclosure, the invention sought to standardize the installation process, reduce installer error, and improve the long-term weather resistance of the entire solar installation. (’685 Patent, col. 6:63-67).

Key Claims at a Glance

  • The complaint asserts claims 8, 10-13, 17, and 18, with claim 8 being an independent apparatus claim (Compl. ¶45).
  • The essential elements of independent claim 8 include:
    • a base with a rectangular bottom wall and a raised portion with side walls forming an enclosed interior space;
    • a plurality of base holes at a periphery of the raised portion;
    • a plurality of mounting members for mounting one or more accessories, with each member provided within the enclosed interior space; and
    • a cover configured to be joined to the side walls of the base.
  • The complaint reserves the right to assert other claims.

U.S. Patent No. 11,349,288 - “Weatherproof Multipurpose Enclosure With Integrated Flashing”

Issued May 31, 2022

  • Technology Synopsis: This patent claims a rooftop enclosure with an off-center raised portion to avoid cutting shingles. The claims focus on a specific arrangement of internal features, including first and second location markers for mounting the base to the roof and a third location marker, positioned between the others, for penetrating the roof to mount a separate component. (’288 Patent, Abstract; Claim 12).
  • Asserted Claims: Independent claims 1 and 12 are asserted, among others (Compl. ¶52).
  • Accused Features: The overall design of the Accused Products, including their off-center housing and internal mounting points, are alleged to infringe (Compl. ¶29, ¶52).

U.S. Patent No. 12,068,592 - “Weatherproof Multipurpose Enclosure With Integrated Flashing”

Issued August 20, 2024

  • Technology Synopsis: This patent claims a rooftop enclosure system where the bottom wall includes protruding location markers (e.g., bosses) within the enclosed interior space. A distinguishing feature is the claimed limitation that the portion of the bottom wall outside the interior space does not include any aperture or location marker for securing the base. (’592 Patent, Abstract; Claim 1).
  • Asserted Claims: Independent claim 8 is asserted, among others (Compl. ¶59).
  • Accused Features: The Accused Products' use of internal mounting bosses while maintaining a featureless external flashing surface is alleged to infringe (Compl. ¶29, ¶59).

U.S. Patent No. D966,199 - “Weatherproof Multipurpose Enclosure”

Issued October 11, 2022

  • Technology Synopsis: This design patent protects the ornamental appearance of a weatherproof enclosure, focusing on the visual characteristics of the box-like structure and its integrated, surrounding flashing.
  • Asserted Claims: Claim 1 (Compl. ¶66).
  • Accused Features: The overall visual appearance of the JB-1.2 and JB1.XL products is alleged to be substantially the same as the patented design (Compl. ¶30, ¶66).

U.S. Patent No. D1,015,279 - “Rooftop Junction Box”

Issued February 20, 2024

  • Technology Synopsis: This design patent protects the ornamental design for a rooftop junction box, showing a perspective view of the enclosure with its distinctive shape and placement on the flashing base.
  • Asserted Claims: Claim 1 (Compl. ¶72).
  • Accused Features: The ornamental design of the Accused Products is alleged to infringe the claimed design (Compl. ¶30, ¶72).

III. The Accused Instrumentality

Product Identification

The "Accused Products" are identified as Defendant's JB-1.2 and JB1.XL junction boxes (Compl. ¶29).

Functionality and Market Context

The products are described as weatherproof enclosures that enable the routing of cables and wires from solar panels on a building's exterior to its interior (Compl. ¶29). The complaint states that the JB1.XL is a larger version of the JB-1.2 with "no material differences" in design and functionality (Compl. ¶30). A photograph provided in the complaint shows two black, pentagon-shaped enclosures on rectangular flashing bases, differing primarily in size (Compl. p. 6). The complaint positions Defendant as a direct competitor in the solar panel mounting industry (Compl. ¶28).

IV. Analysis of Infringement Allegations

The complaint references claim-chart exhibits detailing the infringement allegations for each patent; however, these exhibits were not filed with the complaint. The infringement theories are summarized below based on the narrative allegations.

'121 Patent Infringement Allegations

The complaint alleges that Easy Solar indirectly infringes method claim 22 by actively inducing its customers and installers to use the Accused Products in an infringing manner (Compl. ¶39). The basis for this allegation is Easy Solar's provision of "directions, manuals, guides, and instructions," including online videos, which allegedly instruct users to perform the patented method. These instructions purportedly direct users to position the product's flashing under shingles, apply sealant, and fasten the unit to the roof in a way that practices all steps of the claimed method (Compl. ¶31, ¶39).

'685 Patent Infringement Allegations

The complaint alleges that Easy Solar directly infringes apparatus claim 8 by making, using, and selling the Accused Products, which are alleged to contain every element of the claim (Compl. ¶45). The infringement theory appears to rely on a direct mapping of the physical features of the Accused Products—including their rectangular base, raised side walls, internal mounting features, and cover—to the corresponding limitations of claim 8. The complaint also alleges indirect infringement by inducement, based on encouraging customers to use the infringing products (Compl. ¶46).

Identified Points of Contention

  • Scope Questions: For the '685 patent, a central question may be the proper construction of "mounting members for mounting one or more accessories." The dispute may turn on whether this term, as used in the patent, requires structures tailored for specific accessories (like the DIN rail shown in the specification) or if it can be read more broadly to cover the general-purpose bosses or posts allegedly found in the Accused Products.
  • Technical Questions: For the '121 method patent, a key evidentiary issue will be whether the instructional materials provided by Easy Solar, when followed, necessarily result in the performance of every claimed step. For example, does the documentation mandate applying sealant in a specific manner that satisfies the "form a sealed area" limitation, or does it leave room for non-infringing methods of installation?

V. Key Claim Terms for Construction

  • The Term: "mounting members for mounting one or more accessories" (’685 Patent, Claim 8)
  • Context and Importance: This term appears in independent claim 8 of the ’685 Patent and defines a key internal feature of the claimed enclosure. The infringement analysis for this patent will likely hinge on whether the internal structures of the Accused Products meet this limitation. Practitioners may focus on this term because the patent specification provides specific examples, such as mounting bosses for a DIN rail, which may be used to argue for a narrower construction than the claim language alone might suggest.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that the plain language of the claim is broad and not limited to a specific type of accessory, covering any internal structure "for mounting" things. The patent also describes location markers more generally for securing the base or other components, which may support a broader functional definition. (’685 Patent, col. 6:26-32).
    • Evidence for a Narrower Interpretation: A party could argue that the specification repeatedly ties the "mounting members" to specific examples, such as "a mounting boss for a DIN rail" (item 116) or location markers for "a ground bar" (item 118). This context, along with the figures, may support an interpretation that requires the members to be configured for a specific type of accessory, not just be generic posts. (’685 Patent, col. 6:44-52; Fig. 3B).

VI. Other Allegations

Indirect Infringement

The complaint alleges inducement of infringement for all four asserted utility patents. The factual basis for this claim is that Defendant allegedly provides instructional materials, including directions, manuals, guides, and videos (a YouTube link is cited as an example), that actively encourage and instruct customers and installers to use the Accused Products in a manner that performs the patented methods or constitutes an infringing use. (Compl. ¶31, ¶39, ¶46, ¶53, ¶60).

Willful Infringement

Willfulness is alleged for all six asserted patents (Compl. ¶43, ¶50, ¶57, ¶64, ¶70, ¶76). The allegations are based on both pre-suit and post-suit knowledge. For the ’121, ’685, and ’288 patents, pre-suit knowledge is alleged to have existed since at least October 3, 2022, the date Defendant allegedly cited these patents in an Information Disclosure Statement during its own patent prosecution (Compl. ¶33). For all patents, knowledge is also alleged based on a formal notice of infringement letter with claim charts, allegedly served on Defendant on June 30, 2025 (Compl. ¶33, ¶40).

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

  • A central issue will be willfulness based on pre-suit conduct: will Defendant’s citation of three of the patents-in-suit in its own patent prosecution filings be sufficient to establish the knowledge and intent required for a finding of willful infringement for the period prior to receiving formal notice?
  • A key technical dispute will be one of claim scope: can the term "mounting members for mounting one or more accessories" be construed broadly to cover general-purpose internal posts, or will it be narrowed by the specification's examples to require structures for specific, identifiable accessories like a DIN rail? The outcome of this construction is likely to be dispositive for infringement of the ’685 patent.
  • For the design patents, the case will turn on the "ordinary observer" test: is the overall ornamental appearance of the accused Easy Solar junction boxes substantially the same as the designs claimed in the D199 and D279 patents, considering the design as a whole and not its functional aspects?