On November 18, 2021, ALJ Clark S. Cheney issued the public version of his October 22, 2021 initial determination (“ID”) finding a violation of section 337 in Certain Shingled Solar Modules, Components Thereof, and Methods for Manufacturing the Same (Inv. No. 337-TA-1223).
By way of background, the Commission instituted this investigation on October 21, 2020 based on a complaint filed by The Solaria Corporation of Fremont, California (“Solara” or “Complainant”) alleging violations of section 337 by Canadian Solar Inc. of Ontario, Canada and Canadian Solar (USA) Inc. of Walnut Creek, California (collectively, “Canadian Solar”) based on the importation/sale of certain solar modules, components thereof, and methods of manufacturing the same that infringe one or more claims of U.S. Patent No. 10,522,707 (“the ’707 patent”); U.S. Patent No. 10,651,333 (“the ’333 patent”); and U.S. Patent No. 10,763,388 (“the ’388 patent”) (collectively, "the Asserted Patents"). Solara designs, develops, and sells high-efficiency photovoltaic solar modules primarily for residential applications. The asserted patents generally relate to solar cell devices, also known as photovoltaic or PV devices, which convert sunlight to electricity. According to the Notice of Investigation, the accused products are described as “tiled solar modules, shingled solar modules, and components thereof specifically solar cells, strips of solar cells, strings of solar cells, and strings of solar cell strips, whereby such modules and components, either are covered by, or are manufactured or produced under, or by means of, a process covered by, one or more claims of the Asserted Patents.” Three Canadian Solar models are at issue: HiDM CS1H modules, HiDM CS1H Black modules, and HiDM5 CS1Y modules (collectively, "the Accused Products").
According to the ID, ALJ Cheney determined that there is a violation of section 337 based on the following conclusions of law:
- The Commission has subject matter, personal, and in rem jurisdiction in this investigation.
- The importation requirement has been satisfied.
- Complainant has standing to assert the ’388 and ’333 patents.
- Claims 1-5, 8, 9, 11, 15-17, 19, and 20 of the ’388 patent have been infringed by the importation, sale, and use of all Accused Products.
- Claims 1, 8, 9, 12, and 14-17 of the ’333 patent have been infringed by the importation, sale, and use of all Accused Products.
- Claim 13 of the ’333 patent has been infringed by the importation, sale, and use of the HiDM CS1H and HiDM CS1H Black accused products.
- The technical prong of the domestic industry requirement has been satisfied with respect to the ’388 and ’333 patents.
- The economic prong of the domestic industry requirement has been satisfied with respect to the ’388 and ’333 patents.
- Claims 1-5, 8, 9, 11, 13-17, 19, and 20 of the ’388 patent have not been shown invalid in view of the prior art.
- Claims 1-3, 6, 8, 9, and 12-17 of the ’333 patent have not been shown invalid in view of the prior art.
- No claim of the ’388 patent or the ’333 patent has been shown invalid as failing to satisfy the requirements of 35 U.S.C. § 112.
- Respondent has not demonstrated that unclean hands bars Complainant’s requested relief as to the ’333 patent.
- A violation of 19 U.S.C. § 1337 has been shown by the importation and sale of articles that infringe claims 1-5, 8, 9, 11, 15-17, 19, and 20 of the ’388 patent.
- A violation of 19 U.S.C. § 1337 has been shown by the importation and sale of articles that infringe claims 1, 8, 9, and 12-17 of the ’333 patent.
As a result of his finding of a violation of section 337, ALJ Cheney recommended that the Commission issue a limited exclusion order directed to Canadian Solar, and a bond of 100%.