The EPO Opposition Division has now revoked a patent owned by REC Solar, following the filing of oppositions by six parties including Hanwha Q-Cells. However, the question of inventive step remains unresolved.
18 October 2022 by Konstanze Richter
REC Solar’s patent EP 30 17 520 protects a solar cell assembly. A certain serial arrangement of bypass diodes is intended to prevent a power loss when the solar panels are partially shaded. In September 2020, the EPO published the decision to grant.
However, oppositions from a total of six parties, including Hanwha and Solarwatt, as well as various strawmen, soon followed.
The Opposition Division has now revoked EP 520 on the basis of impermissable extension. Due to the decision on formal grounds, the division did not address the question of prior art and inventive step. JUVE Patent is not yet aware whether REC will appeal the decision.
This is yet another decision in a global dispute in the highly competitive solar technology market.
Among the six opponents is Hanwha, a company that attracted attention with patent infringement suits in the Netherlands against Longi and in Germany against Jinko, REC and Longi. REC and Hanwha are also fighting over solar technology patents in the US and China.
A sixth opponent, CS Wismar, withdrew its opposition during the proceedings in early 2022.
Most recently, REC Solar relied on Finnegan Henderson Farabow Garrett & Dunner. The firm has had a patent team in the German market for less than a year. At the end of 2021, a team led by former Baker McKenzie partner Jochen Herr opened an office in Munich for the US IP boutique.
Ralph Kühn of Munich-based patent law firm Qip Patentanwälte initially acted for REC in the patent application process. In 2019, he transferred the client to London law firm Mewburn Ellis. Then, in April 2022, another change of representatives took place as Jochen Ehlers of Eisenführ Speiser took over representation. However, Ehlers then handed the client to the Finnegan Henderson team in June 2022.
In the 2020 infringement proceedings at the Düsseldorf Regional Court, REC relied on a team from Taylor Wessing.
Hanwha relied on a mixed team from Hogan Lovells. Patent attorney Andreas Schmidt and litigator Steffen Steininger have experience in patent disputes involving solar technology, for example representing SolarEdge in EPO opposition proceedings against Huawei. They also acted in nullity proceedings against SMA Solar.
Teams from Hoyng ROKH Monegier represented the client in the infringement proceedings in the Netherlands and Germany.
Practitioners such as Thomas Kimpfbeck and firms such as Hoffmann Eitle acted for the various strawmen in proceedings.
For REC Solar
Finnegan Henderson Farabow Garrett & Dunner (Munich): Jochen Herr, Moritz Meckel (both partners, both litigators and patent attorneys); associate: Sarah Rodriguez (patent attorney, London)
For Dominik Stauber
Zimmermann & Partner (Munich): Thomas Leidescher, Frank Steinbach (both partners, both patent attorneys)
For second opponent (strawman)
Thomas Kimpfbeck (Freising)
Meissner Bolte (Munich): Jasper Werhahn (partner)
Hogan Lovells (Munich): Andreas Schmid (patent attorney; lead revocation), Steffen Steininger (lead litigation) (all partners); associates: Cédric Rohr, Miriam Werner (both patent attorneys)
For fifth opponent (strawman)
Hoffmann Eitle (Munich): Roland Schieren
For CS Wismar
btb IP Bungartz Baltzer Patentanwälte (Cologne): Klaus Bungartz