IP Law Daily, PATENT—D. Del.: Counterclaims, affirmative defenses dismissed, stricken in solar panel dispute, (Mar 5, 2024)

By Kevin M. Finson

Several claims in a dispute between solar panel manufacturers were dismissed because they were not pleaded with the specificity required for allegations of misleading conduct.

A manufacturer of solar panels accused of infringing a competitor’s patents did not plead its counterclaims and affirmative defenses with enough specificity, the U.S. District Court in Wilmington has held. Claims alleging misleading conduct must meet a heightened pleading standard (Tigo Energy Inc. v. SMA Solar Technology America LLC, March 4, 2024, Williams, G.).

Tigo Energy, Inc. (Tigo) was the owner of U.S. Patents Nos. 8,823,218 (the ’218 patent), 8,933,321 (the ’321 patent), 9,584,021 (the ’021 patent), 9,966,848 (the ’848 patent), 10,256,770 (the ’770 patent), and 10,333,405 (the ’405 patent), each of which claimed solar panel technology related to rapid shutdown of devices. Tigo brought suit for infringement against SMA Solar Technology America, LLC and its parent company SMA Solar Technology AG (collectively, SMA). SMA answered with several affirmative defenses and filed counterclaims based around the allegation that Tigo had collaborated with SMA and others in an industry group known as the SunSpec Alliance to create a standard for rapid shutdown technology, and as part of inducing the industry to adopt standards which required the use of Tigo’s patented technology had agreed not to pursue infringement claims such as those brought in this case but rather to negotiate licenses in good faith. Tigo moved to dismiss several of the counterclaims and to strike several of the affirmative defenses.

Equitable defenses. SMA claimed as its “Sixth Equitable Defense” that the infringement claims were barred under "the doctrine of equitable estoppel, waiver, acquiescence, implied license, patent misuse, and unclean hands." Tigo moved to strike this defense on the ground that SMA had not pleaded each defense with the required particularity. The court held that each of these defenses was based around misleading conduct and the specifics of that misleading conduct must be pleaded with precision and some measure of substantiation. Additionally, the claim for patent misuse lacked an allegation of past attempts to extract licenses with anti-competitive conditions or unfair terms. The court granted the motion to strike with leave to amend.

Breach of contract. Tigo argued that SMA had failed to allege breach of contract because while the contract between the parties required Tigo to license “necessary claims,” there was no allegation to connect the claims asserted in the case to the “necessary claims” for which a license would have to be negotiated under the SunSpec agreement. The court granted the motion to dismiss with leave to amend.

Promissory estoppel, waiver, equitable estoppel. The court noted that these claims were generally brought as affirmative defenses, and that even though they could be brought as counterclaims they required the same specificity of pleading as the equitable defenses, and they were dismissed for the same reason that the equitable defenses were stricken, with leave to amend.

Tortious interference, unfair competition, false advertising, DDRPA, and trade libel. Each of these claims was subject to patent law preemption because there was no allegation of objective bad faith. The claims were dismissed with leave to amend. Additionally, claims for false advertising and trade libel related to a press release on Tigo’s website which did not amount to commercial speech because it only informed the lawsuit of the pending lawsuit, it did not criticize or unfavorably compare SMA’s products. These claims were dismissed with prejudice.

The Case is No. 22-915-GBW.

Attorneys: Benjamin J. Schladweiler (Greenberg Traurig, LLP) for Tigo Energy Inc. Adam W. Poff (Young Conaway Stargatt &Taylor, LLP) for SMA Solar Technology America LLC and SMA Solar Technology AG.

Companies: Tigo Energy Inc.; SMA Solar Technology America LLC; SMA Solar Technology AG

Cases: Patent DelawareNews