Distinct Elements Or Parts Of A Whole? Obviousness Challenge Denied In SolarEdge Techs., Inc. v. Fronius Int'l GMBH

• Published date: 29 November 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Sarah Royer, Stacy Lewis and Thomas Irving

PTAB Decision

In SolarEdge Techs., Inc. v. Fronius Int'l GMBH, No. IPR2022-00849 (P.T.A.B. Oct. 21, 2022), the Patent Trial and Appeal Board ("PTAB") denied institution of inter partes review challenging U.S. Patent No. 9,137,919 ("the '919 patent").

Challenged Technology

The '919 patent describes an inverter, with a lower and an upper housing part and electronic components which are arranged in both the lower and upper housing parts. '919 patent at 1:16-20. An electrical and mechanical connection is made possible through a pivoting movement, achieved by the extension of a slotted guide track [36] corresponding to the diameter [38] of a rotating element [35]. '919 patent at 2:30-35, 4:6-15.

Claim 1 recites:

1. An inverter comprising an upper and a lower housing part, wherein electronic components are arranged in the upper and lower housing parts, said components being electrically connected to one another in a releasable manner by means of a contact-making system formed from two parts, ... , and wherein in the upper and lower housing parts, parts of the contact-making system are arranged, respectively, along this circle arc in such a way that these parts, during the pivoting movement of the upper housing part relative to the lower housing part into an operating position, can be automatically electrically connected with the housing parts connected.

'919 patent, 7:16-8:3 (emphasis added).

Asserted Prior Art

SolarEdge, an Israeli company that also develops inverters, challenged claims 1-7 of the '919 patent on obviousness grounds in light of U.S. Patent No. 5,478,259 and either German Patent No. G 91 05 122.3 ("Siemens") or U.S. Patent No. 7,035,115 ("Walesa"). SolarEdge Techs., Inc., No. IPR2022-00849 at *4.

PTAB

The PTAB panel denied institution of inter partes review, finding that SolarEdge did not show "a reasonable likelihood that it would prevail in its obviousness challenges involving either Siemens or Walesa." SolarEdge Techs., Inc., No. IPR2022-00849 at *5.

For both the Siemens and Walesa patents, the housing components and the electrical contact-making components described together as part of the same lower or upper housing structures. Id. at *7-8. In the '919 patent, however, the contact-making system and the housing components are distinct from one another. Id. at *8. When a claim separately lists elements, the presumption is that those elements are distinct components of the invention. Id., citing Becton, Dickinson & Co. v. Tyco Healthcare Grp....