Tigo Energy Inc. says the U.S. Patent and Trademark Office (USPTO) has denied a SunSpec Alliance challenge to the validity of Tigo’s U.S. Patent No. 8,933,321 in its entirety, as well as denied the organization’s challenge to the validity of claims 14-16 of Tigo U.S. Patent No. 10,256,770.
The Tigo patent claims upheld by the USPTO are relevant to the SunSpec Alliance Rapid Shutdown Specification. Rapid shutdown is a safety function for photovoltaic systems on buildings, designed to reduce the risk of electrical shock to emergency responders, and is mandated by building codes and regulatory bodies in the U.S. and in a rapidly growing number of countries around the world.
In its two inter partes review filings from February 2022, SunSpec Alliance challenged 11 claims in Tigo’s ’321 and ’770 patents, attempting to show those claims as being invalid based on prior art. In its ruling, the USPTO overwhelmingly rejected the SunSpec Alliance filings by upholding nine of the Tigo patent claims it challenged. The ruling on the two other claims has no effect on the applicability of the 18 remaining claims in the ’770 patent to the SunSpec Rapid Shutdown Specification.
“We welcome this ruling by the U.S. Patent Office, which not only demonstrates the value and strength of our IP portfolio, but also allows Tigo and the rest of the solar industry to continue bringing solar installers the high-quality equipment on which they rely,” says Zvi Alon, chairman and CEO of Tigo Energy.
“For many years, Tigo has deployed financial and human capital to develop novel technologies that deliver safe and reliable solutions for the solar industry,” Alon adds. “Our patents reflect the advancements and contributions we have made to solar. And as with previous patent challenges, Tigo will offer reasonable and non-discriminatory licensing terms to SunSpec Alliance members.”
Details are important and not all claims have equal weight or validity. The patent office has determined that Tigo’s claim pertaining to their use of a heartbeat signal is invalid. In every other case that I’ve ever heard of, things that need a heartbeat and don’t have one are (in polite terms) “non viable.”
Furthermore, negotiations that start with a threat of a lawsuit (see Altenergy Power Systems, SMA Solar Technology) are neither reasonable nor non-discriminatory.