Context: In December, JinkoSolar filed a patent infringement complaint in the United States District Court for the Northern District of California against several major renewable energy companies and solar panel manufacturers, including VSUN Solar USA Inc., Toyo Co. Ltd., and Abalance Corporation and its subsidiaries WWB Corporation and Fuji Solar Co., Ltd. (December 8, 2024 ip fray article). The Chinese manufacturer alleged they had infringed two of its N-type tunnel oxide passivated contact (TOPCon) solar cell patents, and sought a preliminary and permanent injunction (PI) preventing any further infringement.
What’s new: Two defendants, VSUN and Toyo, have responded to the complaint, denying the allegations. Abalance and its subsidiaries have meanwhile filed a motion to dismiss the complaint, alleging that there is no California jurisdiction over them, and that, in any event, the complaint doesn’t make it sufficiently clear which of the alleged acts have been committed by which of the defendants.
Direct impact: The motion to dismiss is only being filed by Abalance, WWB and Fuji Solar. If allowed, the lawsuit would be dropped against them but would proceed against VSUN and Toyo.
Wider ramifications: JinkoSolar has been embroiled in disputes around the world as a defendant, with a good success rate in the United States International Trade Commission, the United States District Court for the District of Delaware, Germany’s Düsseldorf Regional Court and the Federal Court of Australia. But this is its first public U.S. action as a plaintiff. The company’s vice president indicated at the time of its filing that it would be engaging in a more offensive patent strategy, so the outcome of this case is very key to how that strategy shapes up.
The patents-in-suit include:
- U.S. Patent No. 11,581,454 (“Solar cell, manufacturing method thereof, and photovoltaic module”)
- U.S. Patent No. 11,824,136 (“Solar cell, manufacturing method thereof, and photovoltaic module”)
VSUN and Toyo have claimed that JinkoSolar is not entitled to any relief on its patent infringement claims because they have not infringed any of JinkoSolar’s patents. Further, they argue that JinkoSolar’s asserted patents are invalid and that the company is not entitled to injunctive relief because the defendants’ alleged activities are not immediate or irreparable.
Abalance, WWB, and Fuji Solar have meanwhile argued that the court lacks personal jurisdiction over them. None of the defendants were incorporated in California, nor do they have California as their principal place of business, and none have purposefully directed acts towards California to give rise to JinkoSolar’s claims, they state.
The defendants also allege that even if the court had jurisdiction over them, JinkoSolar “fails to plausibly allege direct, indirect, or willful infringement” by Abalance, WWB, and Fuji Solar.
They add:
“The Complaint lumps all eight defendants together and treats them as if they were a single monolithic entity, regardless of their actual business. Notably, the Complaint lacks any allegations against Abalance, WWB, or Fuji when it comes to establishing jurisdiction over them.”
At the time JinkoSolar filed its lawsuit, its Vice President Dany Qian issued a statement suggesting the company would be taking a more offensive approach to its patent strategy:
“While we will remain an intellectual property powerhouse with one of the strongest solar PV patent portfolios, as part of our innovation strategy, we are taking a more focused and selective approach to patenting.”
He added that the company currently uses its patents “defensively”, or as a way to dissuade rivals from filing patent infringement lawsuits by threatening to file its own patent suits, but it will soon be opening its portfolio for licensing.
Counsel
JinkoSolar is represented by Louise Lu, Miguel Bombach, and Abigail Gardner at Perkins Coie.
The defendants are represented by Sidley Austin LLP’s Irene Yang and Tung T. Nguyen.