Public communications following Patent Office ruling show SunSpec inducing members to infringe on Tigo Energy intellectual property.
Tigo Energy, a leading provider of intelligent solar and energy storage solutions, announced that it has filed a lawsuit against SunSpec Alliance. The complaint was filed in the United States District Court for the Northern District of California. In the wake of a ruling in which the U.S. Patent and Trademark Office (USPTO) overwhelmingly upheld Tigo claims relevant to the SunSpec Alliance Rapid Shutdown Specification, SunSpec and its representatives continued their long-standing campaign to encourage its members to infringe on Tigo intellectual property (“IP”), by importing or selling infringing rapid shutdown devices in the U.S.
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“The patents in our IP portfolio are core assets to Tigo, the USPTO has affirmed our claims, and we do not understand what would motivate anyone to encourage the violation of the same”
Starting with a formal notification sent to SunSpec Alliance in October 2017, Tigo has repeatedly informed SunSpec Alliance that Tigo patents are necessary for the SunSpec Rapid Shutdown Specification. Tigo asked SunSpec to notify its members that they should acquire a license from Tigo to manufacture, use, import, sell, or offer to sell rapid shutdown devices that practice the SunSpec Rapid Shutdown Specification, and that Tigo would offer a license on reasonable and non-discriminatory terms. SunSpec refused and instead filed two IPR (inter pares review) petitions with the USPTO in July 2021. SunSpec’s IPRs identified five member companies that stood to benefit from that legal intervention. In January 2023, the USPTO rejected one of SunSpec’s IPRs in its entirety and ruled in favor of Tigo on three of five claims in SunSpec’s other IPR. Social media posts and email list communications made by SunSpec after it received this ruling from the USPTO show that SunSpec has not only failed to notify its members that they should acquire a license from Tigo but is actively encouraging infringement of Tigo IP.
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“The patents in our IP portfolio are core assets to Tigo, the USPTO has affirmed our claims, and we do not understand what would motivate anyone to encourage the violation of the same,” said Zvi Alon, chairman and CEO at Tigo Energy, Inc. “The goal of Tigo is to offer high-quality rapid shutdown solutions to our installer base by investing in the research and development necessary to innovate. I reiterate that Tigo will offer reasonable and non-discriminatory licensing terms to SunSpec Alliance members.”
Rapid shutdown is a safety function for photovoltaic systems on buildings, designed to reduce the risk of electrical shock to emergency responders, and is mandated by building codes and regulatory bodies in the U.S. and in a rapidly growing number of countries around the world. Tigo is a leader in rapid shutdown technology and MLPE, with more than one hundred patents granted. Tigo has prevailed in a previous patent infringement litigation and presently has a pending lawsuit that includes six patent infringement claims against SMA Solar Technology America LLC. Tigo has also licensed its patented technology to other solar equipment manufacturers. Millions of Tigo products are installed around the world, where they provide optimized, monitored, and safe solar to protect critical solar energy infrastructure and deliver consistent ROI for the lifetime of renewable energy systems.
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