SunPower Corporation v. PanelClaw, Inc., C.A. No. 12-1633 - MPT, April 1, 2016.

Thynge, M. J. Defendant’s motion for summary judgment is granted in part and denied in part.

The disputed technology relates to solar powered roofing. Defendant moves for summary judgment of non-infringement of the ‘788 patent and that asserted claims of the ‘988 patent are invalid due to indefiniteness, lack of enablement, and failure to meet the written description requirement and/or under section 101 as inoperative and lacking utility. The court adopts the PTAB’s claim construction and finds defendant’s accused products do not infringe as they do not meet the “disposed as a layer” limitation. The court agrees with plaintiff that defendant has not met its burden of clear and convincing evidence to demonstrate that the asserted claims of the ‘988 patent are indefinite. The PTAB’s discussion is not determinative. The fact that another district court has construed the Whereby Clause while facing similar invalidity arguments convinces this court to proceed with the Markman process and denies the motion with respect to indefiniteness. The court agrees with plaintiff that attorney argument in support of enablement and written description arguments is insufficient for summary judgment in favor of defendant.