Energy & Sustainability IP Updates — December 2022

In U.S. technology news, Heliogen, Inc., a renewable energy technology company, recently announced its selection to receive a $4,100,000 award from the U. S. Department of Energy’s “Solar Energy Technologies Office” to accelerate solar-thermal technology for industrial decarbonization and electrical power generation and storage. The project aims to demonstrate solar technology used to reduce the emissions associated with heat-intensive cement manufacturing. The grant is focused on the deployment of technologies across the industrial sector, as well as R&D associated with innovative technologies. https://heliogen.com/heliogen-selected-for-u-s-department-of-energy-award-to-demonstrate/

In litigation news,

• SolarEdge Technologies, Inc. (NASDAQ: SEDG), a provider of power optimizers for large-scale photovoltaic (“PV”) systems, is under scrutiny by its investors over patent infringement allegations brought by its competitor, Ampt, LLC. Back in July 2022, Ampt filed a complaint with the International Trade Commission (“ITC”) requesting that the ITC ban the import of SolarEdge power systems and components that infringe two of Ampt’s patents. Ampt also requested a ban on the sale of infringing products in the United States after they are imported. In addition to the complaint filed with the ITC, Ampt simultaneously filed a similar patent infringement action involving claims from eight of Ampt’s U.S. patents in the U.S. District Court in Delaware against SolarEdge, seeking a finding of patent infringement, substantial monetary damages, and an injunction. The ITC announced in August that it decided to institute an investigation into Ampt’s allegations against SolarEdge. More recently, on November 3, 2022, SolarEdge investor Allen Reford filed a class action complaint in the Southern District of New York that accused SolarEdge and its executives of wrongfully downplaying the severity of the patent infringement allegations and misleading investors, including in financial reports, that the allegations were of no concern. Reford claims that, despite SolarEdge’s representations, SolarEdge lost more than $265 million in market capitalization in just two trading days as a result of the ITC institution and the Delaware court staying the district court litigation. 

• The Patent Trial and Appeal Board issued a 139-page Final Written Decision holding claims 1-21 of U.S. Patent No. 10,844,697 owned by DynaEnergetics Europe GmbH and directed to perforation gun components used for oil and gas drilling unpatentable. The decision is a win for G&H Diversified Manufacturing and nearly a dozen other DynaEnergetics competitors, who were accused of infringing the patent in separate suits largely concentrated in various Texas federal courts. Perforating guns are used to drill holes in oil and gas wells ahead of production. In the lawsuits, DynaEnergetics claims to have developed "groundbreaking inventions," including a wireless detonator assembly and a prewired perforating gun assembly that are covered in part by the patent at issue. DynaEnergetics has filed patent infringement actions against GR Energy Services Operating GP LLC, Horizontal Wireline Services LLC, and XConnect LLC. DynaEnergetics has also asserted the patent against Oil States International Inc., Geodynamics Inc., PerfX Wireline Services LLC, Bear Manufacturing LLC, Oso Perforating LLC, SWM International LLC, Nexus Perforating LLC, and Nextier Completion Solutions Inc. According to the docket for the post-grant review proceeding, DynaEnergetics did not file a request for reconsideration of the decision. Whether DynaEnergetics files an appeal with the Court of Appeals for the Federal Circuit will be known by early 2023.