Hoyng ROKH Monegier wins first instance infringement dispute for Q-Cells

In June, the first instance decision at the Regional Court of Düsseldorf found that Jinko Solar, REC Group and Longi Solar Technologie infringe the German part of European patent EP 22 20 689 (case nos. 4a O 20/19, 4a O 21/19 and 4a O 32/19). Q-Cells owns the patent.

The patent in question protects a solar cell with two surface-passivating dielectric layers on a silicon substrate. The layers are intended to reduce the efficiency losses of the solar cell, and to significantly increase the output of the solar cell.

In the decision, the judges concluded that the three defendants have distributed solar modules containing specific solar cells, which use the technology covered in the EP 689 patent. Furthermore, the court found that the three parties distributed the solar modules without a prior licence agreement with Hanwha’s Q-Cells.

Interestingly, the Regional Court Düsseldorf lists this case as one of its most notable cases of 2020 so far. The technology involved in the solar cells is undeniably groundbreaking, especially with regard to increasing efficiency in solar panels. The ever-heightening importance of renewable energy means the technology could have a wide commercial and economic impact.

Q-Cells excel

Following the decision of the Regional Court of Düsseldorf, the court has granted Q-Cells the right for a provisional enforcement of the injunction. For the infringing parties, this means restricting the import and sales of their products. However, Q-Cells must provide a security for the court decision to be provisionally enforceable.

The court ruled that Jinko, REC and Longi must take measures to recall such products distributed since 30 January 2019. In addition, the Regional Court of Düsseldorf granted a claim for destruction of Jinko, REC and Longi’s patent-infringing products. However, the ruling does not affect REC’s main products, N-Peak and REC Alpha. The firms working for REC and Longi have both confirmed that the parties will appeal the ruling. It is unknown whether Jinko will appeal.

The EP 689 patent is valid in France, the UK, Italy, Spain, Germany, the US and Australia. Parties are conducting parallel patent infringement proceedings in several jurisdictions including Australia and the US, at the District Court of Delaware.

Background proceedings

In March 2019, Q-Cells filed a patent infringement suit against Jinko and REC with the Düsseldorf Regional Court. In the German lawsuit, Q-Cells claimed the two parties were illegally importing and selling solar cells and modules that infringe patents of Q-Cells’ technology. Hanwha Q-Cells received EP 689 in 2014. The patent is valid until 2028.

Simultaneously, Hanwha Q-Cells also filed a patent infringement suit in the US with the US International Trade Commission (ITC). The case is against the same parties. On 3 June 2020, an ITC decision finalised proceedings against Hanwha Q-Cells and REC. The decision states that REC products do not infringe Hanwha Q-Cells’ parallel US patent 9,893,215. In this sense, the Düsseldorf decision is contrary to the earlier decision of the ITC.

It is not yet known whether the opposition parties will file an appeal against the decision in Germany. However, due to the importance of the case, lawyers speculate that the parties will file an appeal regarding the infringement outcome. Withdrawing the products could have an immense economic impact.

An intense fight on the patent’s validity is also ongoing. Opposition proceedings challenging the validity of EP 689 are still pending before the European Patent Office. As yet, the EPO has not released a formal decision regarding validity. A first instance decision is currently in place, but the office is in the process of reconsidering this, with a hearing scheduled for 13 July. Here, the Opposition Division will examine prior art. All defendants involved in the infringement proceedings are also opposing the patent.

All across Germany

Martin Köhler

In the infringement proceedings, Hoyng ROKH Monegier and Samson & Partner are advising Q-Cells on the litigation and attorney side respectively. Hoyng ROKH Monegier has worked with Hanwha for two years, via recommendations and referral which came about from Hoyng ROKH Monegier’s links to Korean firms and industry.

For the opposition proceedings, Munich boutique Peterreins Schley is representing Q-Cells at the European Patent Office. The boutique also registered the patent. The Munich office of Betten & Resch opposed the patent on behalf of REC. Other EPO opponents include Swedish firm IMEC VZW and Singulus Technologies. German boutique Vossius & Partner represents Singulus, while Dutch patent attorney firm V.O. represents another opponent, Solaytec.

On the litigation side, mixed IP boutique Grünecker advises defendant Longi in the dispute. This is alongside Taylor Wessing and CMS Hasche Sigle, which advise REC and Jinko respectively. Furthermore, Grünecker and Taylor Wessing both advise their parties in the EPO patent opposition proceedings. Taylor Wessing and REC have worked together since 2018.

For Hanwha Q-Cells
Hoyng ROKH Monegier (Düsseldorf): Martin Köhler, Mirko Weinert, Thomas Misgaiski, Lars Baum, Carina Höfer
Samson & Partner (Munich): Oswald Niederkofler (lead); Robert Baier
Peterreins Schley (Munich): Felix Glöckler (patent attorney, EPO opposition proceedings)

For Longi
Grünecker (Munich): Ulrich Blumenröder (partner); Elvira Bertram (patent litigator); Sabine Gebhardt, Yilin Jin, Thomas Schuster (patent attorneys)

For REC
Taylor Wessing (Munich): Christian Lederer (lead), Jan Phillip Rektorschek, Tobias Baus
Betten & Resch (Munich): Dirk Sieckmann, Franz-Josef Schöniger (patent attorneys)

For Jinko
CMS Hasche Sigle (Düsseldorf): Markus Deck
CMS Cameron McKenna Nabarro Olswang (London): Tobias Reker