The Boards of Appeal of the European Patent Office have upheld a decision revoking an important technology patent owned by Israel-based company SolarEdge Technologies, Inc. The decision ends a lawsuit filed by SolarEdge against Chinese rival Huawei Technologies Co., Ltd. in Germany’s Mannheim city.
In 2018, the Israeli solar technology manufacturer filed a suit against Huawei and its German sales company Wattkraft in Mannheim for infringing three patents.
In mid-October, the Boards of Appeal rejected SolarEdge’s appeal against the revocation of the patent for multilevel inverter in suit EP 29 30 839 B1 (case ID: TO678/20-3.5.02). The court found the patent to be obsolete. SolarEdge is said to likely withdraw the lawsuit in Mannheim in the next few days before it faces a costly dismissal of the infringement suit.
The market for solar technology is considered highly competitive. In 2019, Hanwha Q-Cells brought cases over solar technology against Jinko, REC and Longi before Düsseldorf Regional Court. Hanwha Q-Cells and Longi are also battling in France and the Netherlands over the technology.
Under new Rules of Procedure
Early in the appeal proceedings, the Boards of Appeal judges criticised how the patent claims did not list an essential feature of the invention. SolarEdge attempted to remedy this through several auxiliary requests before the oral hearing. But this was in vain, as the judges upheld the EPO Opposition Division’s revocation of the patent. The judges also did not allow the auxiliary requests, referring to the Boards of Appeal’s new Rules of Procedure (RPBA).
The EPO introduced the new RPBA in 2020. Under Article 13, after the Boards’ preliminary opinion, parties may only subsequently file in exceptional circumstances. However, SolarEdge’s auxiliary requests contained no such circumstances.
In fact, some EPO and BoA users criticise how the parties must now present all conceivable arguments in their statements right at the beginning of the appeal proceedings. EPO users observe how the boards now examine appeals more in terms of formalities, while giving less consideration to the technical aspects.
As such, the BoA judges did not examine whether the missing feature in SolarEdge’s patent specification might be obvious for the experts, even if it is not explicitly mentioned, as SolarEdge claims.
Two chances remain
Neither can SolarEdge remain hopeful for quick wins in the two other infringement suits against Huawei. In July 2018, it accused Huawei of infringing European patents EP 2 135 348 B1 and EP 28 59 650 B1 in Mannheim. All lawsuits are directed against inverters and optimisers, which are used in connection with solar cells to generate electricity. Huawei manufactures the products and Wattkraft is the largest dealer for the product in Germany.
In November 2019, Mannheim Regional Court dismissed the infringement suit over EP 348. SolarEdge appealed against the decision to the Higher Regional Court in Karlsruhe (case ID: 6 U 26/20). Then, in November 2020, the Federal Patent Court nullified the patent. SolarEdge subsequently appealed this decision to the Federal Court of Justice (case ID: X ZR 39/21). However, the court has not yet ruled on either appeal.
In June 2021, the Federal Patent Court upheld the third patent in suit, EP 650, although with limitations. Both SolarEdge and Huawei challenged the ruling (case ID: X ZR 79/21). In these infringement proceedings, the Regional Court Mannheim called in experts. The court will continue the oral hearing on 24 May 2022 (case ID: 2 O 113/18).
Meanwhile, in China, Huawei hit back by filing infringement suits against SolarEdge products. This, in one case, was successful.
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