IP Law Daily, PATENT—E.D. Tex.: Dismissal granted in power inverter dispute, (Mar 22, 2024)

By Kevin M. Finson, J.D.

Claims for direct infringement were dismissed because the patentee did not allege that the defendant itself, but only the defendant’s customers, practiced all of the asserted claims.

A manufacturer of power inverters was entitled to dismissal of direct and pre-suit indirect infringement claims, the U.S. District Court in Marshall has held. The patentee failed to allege the manufacturer itself performed the asserted claims or that the manufacturer had pre-suit knowledge of the alleged infringement by its customers (CyboEnergy, Inc. v. Hoymiles Power Electronics USA, Inc., March 20, 2024, Gilstrap, R.).

CyboEnergy, Inc. (CyboEnergy) was the owner of U.S. Patents Nos. 8,786,133 (the ’133 patent) and 9,331,489 (the ’489 patent), both of which claimed improvements to power inverters. CyboEnergy brought suit against Hoymiles Power Electronics USA, Inc. (Hoymiles), alleging direct infringement of the ’133 patent and indirect, willful infringement of both patents. Hoymiles moved to dismiss.

Direct infringement. With regard to claims 15 and 19 of the ’133 patent, Hoymiles argued that it could not have directly infringed because the patent claims required a plurality of power inverters or power sources, respectively, and the accused products were all single-inverter or single-power source products. CyboEnergy argued that the products were installed in a series, and in accordance with a manual provided by Hoymiles, to create infringing assemblies.

The court held that as a matter of direct, as opposed to indirect infringement, these actions were attributable only to the customers and electrical contractors who performed them, not to Hoymiles as the seller of individual parts which could, when assembled, conceivably be used to infringe.

Indirect and willful infringement. The indirect and willful infringement claims as to both patents, as far as pre-suit damages were concerned, required pre-suit knowledge of the patents. The court found that there were no allegations of pre-suit knowledge nor any allegations of facts from which it could infer pre-suit knowledge, such as a notice letter or pre-suit interactions between the parties.

The court granted the motion to dismiss with regard to direct infringement of the ’133 patent and pre-suit indirect and willful infringement of both patents but denied it in all other respects. The court allowed leave to amend the complaint.

The Case is No. 2:23-cv-00311-JRG.

Attorneys: Jacob Bruce Henry (Blank Rome LLP) for CyboEnergy, Inc. Andrea Leigh Fair (Ward, Smith & Hill, PLLC) for Hoymiles Power Electronics USA, Inc.

Companies: CyboEnergy, Inc.; Hoymiles Power Electronics USA, Inc.

Cases: Patent TexasNews