In the cold winter of the photovoltaic industry, the overseas patent war has not stopped. From October 3 to 4, Runyang Co., Ltd., RUNERGY USA INC. (hereinafter referred to as Runyang United States Company) and RUNERGY ALABAMA INC. (hereinafter referred to as Runyang Alabama Company) filed an IPR (inter partes review application) against United States patent No. 9722104 and 10230009 (hereinafter referred to as 104 patents and 009 patents). These two patents are the same patents that Trina Solar sued against Runyang for infringement a few months ago.

The IPR filed by Runyang is one of the most widely used procedures in patent invalidation proceedings in United States, allowing third parties to challenge the validity of a patent after it has been granted.

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In May and September this year, Trina Solar filed lawsuits against Runyang Co., Ltd., Runyang United States Co., Ltd., and Runyang Alabama Company (hereinafter collectively referred to as Runyang Fang) in United States, accusing Runyang of infringing two of its patents.

In the face of the patent war launched by Trina Solar (SH688599, stock price 22.48 yuan, market value 48.992 billion yuan), on October 11, Tang Jun, president of Runyang Co., Ltd., told the reporter of "Daily Economic News" by phone that first, Runyang is a passive party; second, there was no infringement on the part of Runyang; Third, Runyang did not close the door to friendly consultations. If the other party insists on hitting hard, Runyang will also do his best.

On October 12, Yao Ziran, global legal president of Trina Solar, told the National Business Daily that Trina Solar's goal is to share its technology with the entire industry through reasonable consideration, rather than excluding competitors through patent litigation.

President of Runyang Co., Ltd.: There is no infringement of the other party's patent

According to the two petitions submitted by Runyang, Runyang requested the cancellation of claims 1~11 of the 104 patent because they were not patentable. Runyang argued that these claims were for well-known features of solar cells, and that the prior art on which the petition was based was not considered or examined by the examiner during the examination of the 104 patent.

The reporter of "Daily Economic News" learned through inquiry that the original holder of the two patents complained of infringement by Trina Solar this time is LG Electronics Inc. LG Electronics, the patent was transferred to a wholly-owned subsidiary of JinkoSolar in 2022. On March 18 this year, Trina Solar acquired it through a transfer.

Runyang believes that before the effective filing date of the 104 patent, a patent document published by Jin disclosed a novel feature of solar cells: an isolation area between the edge of the back surface of the solar cell and its back surface field (BSF) to prevent short circuits. The 104 patent simply expands Jin's solar cells by replacing the back surface field (BSF) formed by Jin through diffusion with deposited polycrystalline silicon BSF and adding an oxide layer between them.

In addition, the reporter of "Daily Economic News" learned that two years before the 104 patent application was filed, Professor Feldmann had elaborated on the alternative to such BSF in an academic paper and named it "TOPCon", or "tunnel oxidation passivation contact". A few months after Feldmann's paper was published, Chang unveiled a solar cell design that uses the same TOPCon structure as the 104 patent and also features an isolation zone. Therefore, Runyang Fang believes that the claim of patent 104 is neither novel nor non-obvious.

Runyang also requested the cancellation of claims 1~17 of the 009 patent on similar grounds.

According to the reporter of "Daily Economic News", the multi-party reexamination initiated by Runyang is one of the most widely used procedures in the United States patent invalidation procedure, allowing third parties to challenge the validity of the patent after the patent is granted. IPR procedures are commonly used to examine the validity of patent claims, particularly with respect to the novelty and non-obviousness of patents. Through the IPR process, the PTAB (Patent Examination and Appeal Board) under the USPTO (United States Patent and Trademark Office) can re-examine patent claims and decide whether they are valid.

In fact, Runyang's IPR application is a counterattack to Trina Solar's patent protection.

In May 2024, Trina Solar filed a patent infringement lawsuit against Runyang Alabama and Runyang United States in Delaware District Court, and on September 9, during the 2024 United States International Photovoltaic Energy Storage Exhibition (hereinafter referred to as RE+), the largest photovoltaic exhibition in North America, Trina Solar filed a patent infringement lawsuit against Runyang in the Central District Court of California.

On September 30, Trina Solar filed an application with the ITC (United States International Trade Commission) under Section 337 of the United States Tariff Act of 1930, claiming that certain TOPCon solar cells, modules, panels and downstream products exported, imported and sold to the United States violated Section 337 of the United States (hereinafter referred to as the "Section 337 investigation"), and Runyang was listed as a defendant.

According to Trina Solar, the reason for the second lawsuit is that Runyang is still promoting the alleged infringing products during the RE+ exhibition.

Regarding Trina Solar's rights to infringement, on October 11, a reporter from the "Daily Economic News" contacted Tang Jun, president of Shangrunyang Co., Ltd., by phone, and he stressed to the reporter: "We do not think that we have infringed their patents. ”

Trina Solar speaks out: the industry lacks property rights protection

Ma Youping, deputy director of the Patent Law Committee of the Beijing Lawyers Association, pointed out to reporters that the ITC is responsible for adjudicating unfair imports related to intellectual property infringement, and usually gives a preliminary determination within 12 to 14 months, which is difficult to be affected by the IPR.

According to Ma Youping, the IPR procedure and the 337 investigation are two separate and parallel procedures.

The IPR proceedings are administered by the USPTO's PTAB and do not affect the ITC's proceedings. Typically, Section 337 investigations do not take into account the progress of the PTAB process. This means that the IPR proceedings are not capable of opposing the Section 337 investigation brought by the petitioner.

In terms of time, the overall process of the IPR program is longer. According to Ma, it takes six months for the PTAB to decide whether to file a case, and another six to 12 months after the case is filed. It is not possible to affect the Section 337 investigation until the IPR's ruling and court appeal process is concluded. The whole process is very long, but the preliminary findings of the 337 investigation usually come after 12 to 14 months.

In this way, it may be that the IPR procedure of Runyang has not yet ended, and the preliminary ruling of the Section 337 investigation submitted by Trina Solar has already taken effect.

Trina Solar and Runyang have been cooperating for many years. In June 2023, the GEM prospectus submitted by Runyang Co., Ltd. showed that the core products of its business are solar cells, and its downstream customers include various large module manufacturers, including Trina Solar. In 2020, Trina Solar entered the top five customers of Runyang Co., Ltd., with annual sales of 514 million yuan.

Why did Trina Solar initiate this patent lawsuit?

Ma Jun, Global Intellectual Property Director of Trina Solar, told reporters: "At present, the photovoltaic industry has a phased supply-demand mismatch structure, and the main reason we have analyzed is the lack of intellectual property protection. We do not aim at innovation, and have formed a low-quality development stage for the purpose of low-price competition. ”

In September this year, Trina Solar told the National Business Daily that up to now, Trina Solar has applied for more than 5,000 patents worldwide and authorized more than 3,000 patents. More than 500 patents for TOPCon cells and modules. The company has a large reserve of TOPCon patent resources, which is one of the reasons why Trina Solar has launched a number of patent lawsuits. Trina Solar said its cumulative R&D investment has exceeded 23 billion yuan.

On the other hand, the strong demand of the United States photovoltaic market and excess income have become a must for many manufacturers to compete overseas, attracting Canadian Solar, JA Solar, LONGi Green Energy and other companies to build factories in the United States. Perhaps it is also one of the reasons for the many patent wars.

Guohai Securities Research Report has pointed out that in the short term, the United States photovoltaic market ushered in a rush before the expiration of the anti-circumvention exemption. In 2024Q1, 11.8GW of new installed capacity was added, a year-on-year increase of about 90%, and about 102GW of PV projects have been contracted. In the medium term, the increase in tax rates brought about by the new round of "double anti-sanctions" may hinder the export of production capacity of the four Southeast Asian countries (Cambodia, Malaysia, Thailand and Viet Nam), and it is expected that the demand for United States photovoltaic market will grow steadily in the long term. According to statistics from United States consulting firm Wood Mackenzie, according to the currently announced plan, the United States PV module production capacity will exceed 120GW by 2026, which is three times the domestic PV installed capacity at that time.

According to Trina Solar's 2023 annual report, the company's photovoltaic module products achieved sales revenue of 10.83 billion yuan in United States last year. The gross profit margin of Trina Solar's module products in the United States market reached 34.23%, exceeding that of Europe (15.41%), Japan (19.87%) and other regions (13.53%). In 2023, Trina Solar will deploy 5GW of module base in United States, which is expected to start production in the second half of this year.

The United States market is equally important to Runyang and is one of the main digesters of Runyang's overseas production capacity. Tang Jun once introduced in an interview with the media that Runyang "RUNERGY" has become a brand that has successfully ranked among the top five photovoltaic modules in United States. On October 4, Runyang posted on the WeChat public account that Runyang's solar module manufacturing plant in Huntsville, Alabama, United States, has been officially put into operation recently, with an annual production capacity of 2GW, and is expected to successfully deliver the first batch of customer orders in October. Regarding the lawsuit filed by Trina Solar, Tang Jun told the "Daily Economic News" reporter that there was no impact on Runyang's factory in Alabama.

Many patent wars have chosen the battlefield in the United States, is it to seize the share of the United States market? Ma Jun told reporters: "It is impossible for us to use intellectual property weapons to achieve a monopoly on the market, which will also be regulated by law." What we need to do is to better promote the development of the entire technology and industry. This industrial chain will go in a better direction. ”

PV patent wars: Litigation is just the beginning

Trina Solar's third complaint against Runyang on September 30 is different from the previous two. The ITC adjudication is faster, more efficient, and has a significant impact and outcome.

According to Ma Youping, if the ITC finds that the infringement is established, it may issue a general exclusion order, a limited exclusion order or an injunction, and once this remedy is issued, the respondent can no longer export the infringing product to the United States, and even the infringing product exported to the United States needs to be destroyed.

In addition, the lawsuit initiated by Trina Solar also included a claim against Runyang.

Yao Ziran revealed: "Litigation is not the goal of our company, it is only a means, not the first means. At present, we are continuing negotiations with our friends. ”

Tang Jun told reporters that Runyang hopes that the two sides can resolve this issue through friendly negotiation and avoid unnecessary legal disputes. "If the negotiation fails, we will resolutely safeguard our legitimate rights and interests."

Chang Jiang, a senior analyst of industrial manufacturing at the Toubao Research Institute, once pointed out in an interview with a reporter from the "Daily Economic News" that patent protection can motivate enterprises to invest in research and development and promote technological innovation. Spending significant resources on legal proceedings rather than on technology research and development, especially for SMEs, could threaten their viability.

The patent disputes that are full of topics in the photovoltaic circle are far more than that. Intellectual property litigation initiated by leading companies may have just begun.

Translation Cover image credit: Visual China