Esdec Inc v. Unirac Inc

1. Case Identification

• Case #: IPR2021-01566
• Patent #: 8,128,044
• Filed: September 30, 2021
• Petitioner(s): EcoFasten Solar, LLC; Wencon Development, Inc. d/b/a Quickmount PV Corporation; and Esdec, Inc.
• Patent Owner(s): Unirac, Inc.
• Challenged Claims: 1-34

2. Patent Overview

• Title: System for Mounting a Photovoltaic Module to a Surface
• Brief Description: The ’044 patent discloses a system for removably and adjustably mounting photovoltaic modules or other flat panels onto a surface, such as a roof. The system comprises hardware components including a footing grid, multi-track rails that mount onto the grid, and clamps that variably position on the rails to secure the modules.

3. Grounds for Unpatentability

Ground 1: Anticipation over Hideyuki - Claims 5-10, 16, 23-26, and 31 are anticipated by Hideyuki under 35 U.S.C. §102.

• Prior Art Relied Upon: Hideyuki (Japanese Patent Publication No. JPH 10-122125A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hideyuki, which discloses a “Mounting Platform for Solar Energy Utilizing Equipment,” teaches every limitation of the challenged independent claims. Hideyuki’s network of leg securing frames (33), support brackets (45), and connecting brackets (53) was asserted to form the claimed “footing grid” with at least one “keeper.” Its vertical frames (34) were mapped to the claimed “rail with at least two tracks” (dovetail grooves 42 and 43). Petitioner contended Hideyuki’s holding brackets (59) are the claimed “clamps variably positionable on the rail” for securing modules, and its vertical frames (34) have the claimed hollow body structure with opposing sides and shoulders. Dependent claims were allegedly met by Hideyuki’s disclosure of channels for slidably engaging the keepers (claim 6) and clamps (claim 9).

Ground 2: Obviousness over Hideyuki in view of Donauer - Claims 1-15, 17-22, 27-30, and 32-34 are obvious over Hideyuki in view of Donauer under 35 U.S.C. §103.

• Prior Art Relied Upon: Hideyuki (Japanese Patent Publication No. JPH 10-122125A) and Donauer (German Patent Publication No. DE29616947U1).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Hideyuki taught most claim limitations as detailed in Ground 1. Donauer was introduced primarily to disclose alternative clamp designs. Specifically, Donauer’s clamping profile no. 02 (12) was argued to teach a clamp with opposing sidewalls, a lower inner edge, an upper face, and a fin (claim 11). Donauer’s clamping profile no. 03 (13) was asserted to teach a clamp with a base, and monolithically extending ascending and descending members (claims 13, 17e, 28). This profile also allegedly discloses a fin on the ascending member (claim 14) and a hole in its base (claim 15).
  • Motivation to Combine: A POSITA would combine Hideyuki and Donauer to improve Hideyuki’s system. Hideyuki’s clamps were designed for modules with specific lipped extensions. A POSITA installing modules without such extensions would be motivated to substitute Hideyuki's holding brackets (59) with Donauer's more versatile U-shaped clamps (profile 02) or L-shaped end clamps (profile 03). This would create a better appearance with smaller gaps between modules and increase the number of modules that could be installed in a given space.
  • Expectation of Success: A POSITA would have had a reasonable expectation of success, as the combination involved substituting known mounting components with other known mounting components to achieve predictable results in securing solar panels.

Ground 3: Obviousness over Masami in view of Ullman - Claims 5-16 and 23-33 are obvious over Masami in view of Ullman under §103.

• Prior Art Relied Upon: Masami (Japanese Patent Publication No. 11-013238) and Ullman (Patent 6,360,491).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Masami, which discloses a “Frame for Solar Battery Module,” taught a solar panel mounting system with a footing grid (mounting brackets 7), dual-track rails (vertical rails 4 with grooves 31 and 33), and elements that function as clamps (module side covers 22). To the extent Masami's covers were not considered clamps, Petitioner argued for combining Masami with Ullman. Ullman disclosed various clamps for slidably connecting to support members, including end clamps (76) and bi-module clamps (78), which allegedly taught the claimed clamp structures, including those with a base and ascending/descending members (claim 13) and plates with opposing side walls (claim 10).
  • Motivation to Combine: A POSITA would combine Masami's rail system with Ullman's clamps to create a simpler, more efficient system. This would involve attaching Ullman’s clamps directly to Masami’s vertical rails, eliminating the need for Masami's separate horizontal rails (5) and reducing the total number of components, thereby simplifying installation and lowering costs.
  • Expectation of Success: Success would be expected because the combination involved attaching a known type of clamp (Ullman) to a known type of mounting rail (Masami), a common and predictable task for a POSITA in this field.

• Additional Grounds: Petitioner asserted obviousness challenges based on Masami in view of Nobuyuki, and an anticipation challenge based on Nobuyuki alone, but relied on similar arguments regarding rail and clamp structures.

4. Key Claim Construction Positions

• "clamp" (claims 5, 9, 23, 26, 28): Petitioner argued this term should be given its plain and ordinary meaning: a device for securing or joining parts together. This construction is asserted to be consistent with the specification and a prior PTAB decision in a related reexamination that rejected a narrower construction proposed by the Patent Owner.
• "means for variably positioning the one or more clamps..." (claim 23): Petitioner contended this is a means-plus-function term. The claimed function is "variably positioning the one or more clamps in a second channel of the body," and the corresponding structure disclosed in the ’044 patent is the hole in the clamp (e.g., "means 66" in Fig. 11) and associated hardware (e.g., bolts) for connecting the clamp to the rail.

5. Arguments Regarding Discretionary Denial

• Petitioner argued that the Board should not exercise its discretion to deny institution under 35 U.S.C. § 325(d). The primary assertion was that the grounds raised were not the same or substantially the same as art and arguments raised during prosecution. Specifically, the Examiner never considered Hideyuki or Donauer (Grounds 1 and 2). While Masami, Nobuyuki, and Ullman were previously cited, Petitioner contended there was no indication the Examiner considered the specific combinations and arguments presented in the petition, which were supported by new expert testimony.

6. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-34 of the ’044 patent as unpatentable.