SolarEdge has destroyed a second patent held by SMA Solar Technology. For now, SolarEdge has averted two infringement suits filed by its German competitor. However, the bitter dispute between the two solar technology manufacturers is likely to drag on for months.
24 August 2021 by Mathieu Klos
The patent dispute between SolarEdge and SMA Solar Technology concerns inverter technology for solar energy systems – a growing market worldwide. In mid-August, the Federal Patent Court struck down SMA Solar’s European patent EP 2228895 B1.
The judges have not yet provided detailed reasoning for the ruling (case ID: 6 Ni 14/19). According to the oral hearing, a lack of inventive step could have been the decisive factor.
The Federal Patent Court judges had already revoked SMA Solar Technology’s EP 1610452 B1 last October. SMA Solar Technology appealed against this decision. That patent protects inverters with cooling units for cooling electronic components (case ID: 6 Ni 15/19). EP 2228895 B1 in the current case protects an inverter with an isolation point.
Inverters ensure that the direct current produced by photovoltaic systems is converted into alternating current. This step is necessary for when the electricity is fed into the power grid or used in the home.
The two German nullity rulings are part of a global dispute between the two competitors in the lucrative solar technology market. SolarEdge not only attacked SMA Solar’s two patents in Germany, but also filed nullity suits in the US. However, SMA Solar had not filed infringement suits there.
In Germany, litigation began in 2019 when SMA Solar filed a suit against SolarEdge at Düsseldorf Regional Court for infringing the two European patents.
The Regional Court Düsseldorf granted the infringement action regarding EP1610452 B1 in December 2019 at the first instance. SolarEdge was ordered to cease and desist (case ID: 4c O 66/18). Soon after, the Israeli company appealed against the ruling at the Higher Regional Court Düsseldorf.
However, the judges have not yet ruled on the appeal as the Federal Patent Court declared EP 1610452 B1 invalid in October 2020.
Düsseldorf Regional Court had suspended the second infringement case concerning EP 2228895 B1 until a ruling in the current nullity suit was forthcoming (case ID: 4c O 61/18). This will remain suspended, as an appeal from SMA Solar Technology means the nullity case is not yet final.
The Federal Court of Justice’s 10th Civil Senate now plays a key role in the dispute. If the Karlsruhe court confirms the Federal Patent Court’s two nullity decisions, SolarEdge will have averted both of SMA Solar Technology’s infringement claims. However, should the Federal Court of Justice revise one of the two rulings, SMA Solar would once again have the upper hand.
For the present, SolarEdge is ahead and, above all, has delayed a potential conviction for patent infringement. It will probably be some time before the Federal Court of Justice finally rules on the validity of the two patents.
The market for solar technology is considered highly competitive. In 2018, SolarEdge accused Huawei of infringing three European patents for its DC-optimised inverter technology for photovoltaic systems. The Israeli company also sued Huawei’s German distributor Wattkraft Solar at Mannheim Regional Court for infringing the patents.
In 2002, Hanwha Q-Cells brought cases over solar technology against Jinko, REC and Longi before Düsseldorf Regional Court.
Both companies are relying on their core advisors in the German proceedings. For example, the Bielefeld patent attorneys of Loesenbeck Specht Dantz regularly advise the German solar technology manufacturer SMA Solar on technical issues in litigation. They always work together with Krieger Mes partner Axel Verhauwen.
Opponent SolarEdge has a long-standing client relationship with the Munich patent team of Hogan Lovells’ Steffen Steininger.
The team also represents SolarEdge in the series of lawsuits against Huawei, which has already lasted several years. Unlike SMA Solar, SolarEdge relies on integrated advice from litigation and patent attorneys from one firm.
A few years ago, Hogan Lovells began to set up its own patent attorney department to advise on the technical aspects of litigation. Andreas Schmid was one of the first patent attorneys the firm hired for this purpose. He then joined the Hogan Lovells partnership that year as the first patent attorney who is not also dually qualified as a lawyer.
For SMA Solar
Krieger Mes & Graf v. der Groeben (Düsseldorf): Axel Verhauwen
Loesenbeck Specht Dantz (Bielefeld): Hubertus Kleine, Peter Specht (both patent attorneys)
In-house (Niestetal): Ralf Löser (head of IP)
Hogan Lovells (Munich): Steffen Steininger (lead litigation), Andreas Schmid (patent attorney; lead revocation); associates: Katharina Bickel, Daniel Kaneko, Cédric Rohr (patent attorney)
Federal Patent Court, 6th Senate
Karin Friehe (presiding judge)