Esdec Inc v. Unirac Inc

1. Case Identification

• Case #: IPR2022-00088
• Patent #: 9,584,062
• Filed: November 10, 2021
• Petitioner(s): EcoFasten Solar, LLC and Esdec, Inc.
• Patent Owner(s): Unirac, Inc.
• Challenged Claims: 1, 6-12, 14, 17-20, and 26-31

2. Patent Overview

• Title: Apparatus for Mounting Photovoltaic Modules
• Brief Description: The ’062 patent describes an apparatus for mounting photovoltaic modules that includes a bracket with a longitudinal slot in its lower portion, a clamp securable to an upper portion of the bracket, and a footer that is variably positionable along the slot. The apparatus is configured to mount adjacent photovoltaic modules on a roof structure.

3. Grounds for Unpatentability

Ground 1: Obviousness over Wildes and Wildes II - Claims 1, 6-12, 14, 17-20, and 26-31 are obvious over Wildes in view of Wildes II.

• Prior Art Relied Upon: Wildes (Provisional Application # 62/014,054) and Wildes II (Provisional Application # 61/904,049).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wildes discloses a complete photovoltaic mounting system, including a "floating" coupling device with a bracket (lower coupling member) and a clamp (upper coupling member) used to secure adjacent modules at their corners. Wildes also discloses the claimed ledges on the bracket and wings on the clamp. Wildes II, which is part of the same overall disclosure as Wildes, teaches a similar coupling device that is attachable to a roof surface and explicitly discloses a bracket with a slot in its lower portion and an L-shaped footer that engages the slot to be variably positionable. Petitioner contended that the combination of these references discloses every limitation of the challenged claims. For example, Wildes II's roof-attachable bracket with a slot and footer can be directly substituted for Wildes' floating bracket.
  • Motivation to Combine: A POSITA would combine the teachings of Wildes and Wildes II to secure the floating coupling device of Wildes to a roof surface, thereby creating a more stable and secure platform for mounting the photovoltaic modules. Both references are directed to the same field and form part of the same published application, making the combination a selection from a limited number of design choices.
  • Expectation of Success: A POSITA would have a reasonable expectation of success in making this combination due to the high degree of mechanical similarity between the coupling device components disclosed in Wildes and Wildes II.

Ground 2: Obviousness over Wentworth - Claims 1, 6-12, 14, 17, 18, 20, and 26-31 are obvious over Wentworth.

• Prior Art Relied Upon: Wentworth (Patent 8,938,932).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Wentworth, which describes a "rail-less" photovoltaic module mounting system, discloses all limitations of the challenged claims. Petitioner presented two alternative interpretations of Wentworth’s components, both of which allegedly read on the claims.
    • Under a first interpretation, the claimed 'bracket' comprises Wentworth's plate member 148 and top slider 124, and the claimed 'footer' is Wentworth's block slider 110. In this view, the top slider (lower portion of the bracket) defines a sliding groove (slot) that receives the block slider (footer), making the footer variably positionable.
    • Under a second interpretation, the claimed 'bracket' is Wentworth's plate member 148 alone, which has an unlabeled slot on its underside. The 'footer' comprises the block slider 110 and top slider 124.
  • Petitioner asserted that under either interpretation, Wentworth discloses a bracket, a clamp (clamp member 146) securable to the bracket, and a footer that is variably positionable along a slot. Wentworth further teaches mounting adjacent photovoltaic modules between ledges on the bracket and wings on the clamp, securing them at their end portions. Dependent claims related to the L-shape of the footer, the trim assembly, and electrical bonding are also allegedly taught by the various components and configurations shown in Wentworth.

4. 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 core argument was that none of the grounds raised in the petition are the same or substantially the same as the art and arguments considered by the Examiner during the original prosecution of the ’062 patent. Specifically, neither the Wildes/Wildes II combination nor the Wentworth reference was previously considered by the USPTO. Therefore, Petitioner contended the petition raises novel arguments that the Examiner would not have allowed the claims over.

5. Relief Requested

• Petitioner requests the institution of an inter partes review and the cancellation of claims 1, 6-12, 14, 17-20, and 26-31 of the ’062 patent as unpatentable under 35 U.S.C. §103.