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:
- 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., LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010). The language of claim 1 supports viewing the housing and contact-making system as two distinct structures, because the claim lists these elements separately. Id. Independent claim 1 recites "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." Id. at *7 (emphasis added).
In addition to listing the housing and contact-making components as separate elements, claim 1 also includes a clause that further supports viewing these two components separately. Id. at *8. Claim 1 recites, "wherein in the upper and lower housing parts, parts of the contact-making system are arranged." Id. The housing and contact-making structures must be distinct because a structure cannot be arranged in itself. Id.
Lastly, the specification "consistently describes the housing and contact-making structures as distinct." Id. For example, the specification states that "electronic components are arranged within the upper and lower housing parts 33, 34 in most cases" and "it is also possible not only to connect housing parts 33, 34 and the contact-making system 40 to one another by means of the rotating element 35, but also to couple individual devices with each other in such a way that data and/or signals are exchanged via the contact-making system 40. . . ." '919 patent at 5:15-20, 6:32-37.
Because SolarEdge could not "identify separate structures in the asserted references for the claimed housing and contact-making system" they were not able to demonstrate a reasonable likelihood of prevailing in their § 103 objections. Id. at *8.
Take-away
Though components of an invention may at first glance correspond in their functionality with components of asserted references, if the components are written in the claims and specification as separate elements, the components are distinct from each other and are not obvious over references where those components are described together.
In Becton, Dickinson, relied upon by the PTAB, the claim at issue listed four separate elements and the claim construction lesson was clear: "[w]here a claim lists elements separately, 'the clear implication of the claim language' is that those elements are 'distinct component[s]' of the patented invention." Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d at 1254.
For claim drafters, therefore, the lesson is to be careful and deliberate, knowing that reciting components separately will be construed to be distinct from each other. Reciting components separately may help for patentability/validity, but the flip side is that each of those components will be necessary for literal infringement.
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