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[email protected] Paper 7
571-272-7822 Date: June 30, 2014
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
PANEL CLAW, INC,
Petitioner,
v.
SUNPOWER CORPORATION,
Patent Owner
Case IPR2014-00386
Patent 5,505,788
Before MICHAEL J. FITZPATRICK, JO-ANNE M. KOKOSKI, and
JON B. TORNQUIST, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108
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Patent 5,505,788
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I. INTRODUCTION
Petitioner, Panel Claw Inc., filed a Petition for an inter partes review of
claims 1–5, 16, and 17 of U.S. Patent No. 5,505,788 (“the ’788 patent,” Ex. 1001).
Paper 2, “Pet.” Patent Owner, SunPower Corporation, filed a Preliminary
Response pursuant to 35 U.S.C. § 313. Paper 6, “Prelim. Resp.”
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which provides as follows:
THRESHOLD—The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.
We have authority to determine whether to institute an inter partes review.
35 U.S.C. § 314(b); 37 C.F.R. § 42.4(a). Upon consideration of the Petition and
the Preliminary Response, and for the reasons explained below, we determine that
the information presented does not show that there is a reasonable likelihood that
Petitioner would prevail with respect to any of the claims challenged in the
Petition.
A. Related Matters
Patent Owner asserted the ’788 patent and related U.S. Patent No. RE38,988
(the “related ’988 patent”) against Petitioner in Sunpower Corporation v. Panel
Claw, Inc., Case No. 12-1633-GMS (D. Del.). Pet. 5; Paper 5, 2. Patent Owner
also asserted these patents against another defendant in SunPower Corp. v. Sunlink
Corp., Case No. 08-cv-2807 (N.D. Cal.) (the “Sunlink case”). Ex. 1003; Prelim.
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Resp. 4. The parties did not identify the Sunlink case in their notices pursuant to
37 C.F.R. § 42.8(b)(2) but should have. See Pet. 5; Paper 5, 2.
Petitioner filed a separate petition for an inter partes review of the related
’988 patent. See IPR2014-00388.
B. The Asserted Grounds
Petitioner presents, in this Petition, the following grounds of unpatentability:
References Basis Claims challenged
Brown (Ex. 1005)1 § 102 1–5, 16, and 17
Stiebel (Ex. 1006)2 § 102 1–5, 16, and 17
Russell (Ex. 1007)3 § 102 1–5, 16, and 17
C. The ’788 Patent
The ’788 patent relates “to a photovoltaic roofing assembly which can
regulate the temperatures experienced by the solar[] cells and requires no roof
penetrations for hold-down to the roof surface.” Ex. 1001, 1:7–10. The assembly
includes a “plurality of photovoltaic modules” that are “disposed as a layer on top
of the roofing membrane.” Id. at Abstract. The ’788 patent notes that “[s]olar
cells are known to decline in efficiency with increasing temperatures.” Id. at 1:48–
1 DE 2758067, published July 5, 1979. Petitioner submitted the German language
reference (Ex. 1008) as well as a translation (Ex. 1005). 2 DE 7913751, published August 26, 1982. Petitioner submitted the German
language reference (Ex. 1010) as well as a translation (Ex. 1006). 3 Miles C. Russell, et al., PV Array Designs for Flat-Roof Buildings,
IEEE, 1129-1133 (1993).
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49. The photovoltaic modules of the ’788 patent are supported above the roofing
membrane by pre-formed spacers, which create a space underneath the
photovoltaic modules and allow a convecting fluid, such as air, to circulate below
to enable heat exchange. Id. at 3:59–62, 5:5–7, 6:18–24.4
Figure 1a of the ’788 patent is reproduced below.
Figure 1a illustrates photovoltaic modules 104 (partial), 106, 108, and 110
(partial) supported above roofing membrane 102 by spacers 112, 114, 116, 118,
120, and 122. Ex. 1001, 4:66 – 5:7. As shown above, a “semi-continuous spatial
layer is created below photovoltaic modules 104, 106, 108, 110.” Id. at 6:18–20.
This “enables the convection of a fluid, preferably air, through passageways
4 Alternatively, or additionally, a phase change material may be employed in the
space between the roofing membrane and the photovoltaic modules created by the
pre-formed spacers. Id. at 3:59–62, 7:59 – 8:50. However, in all the references
asserted in the Petition, Petitioner relies on air acting as a convecting fluid, and not
on a phase change material, to meet the challenged claims.
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created by the spacers” for “transferring heat from the backside of the photovoltaic
modules.” Id. at 6:20–22.
Figure 9 of the ’788 patent is reproduced below.
Figure 9 illustrates an array of photovoltaic modules 902 situated on top of a
building rooftop. Ex. 1001, 12:36–38; see also id. at 6:13–14 (“The modules and
spacers are placed in arrays on top of the roof membrane.”). Roofing paver
sections 904 are situated between predetermined areas of the array of photovoltaic
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modules to provide walkways and perimeters around roof penetrations, such as
vents, and around roof equipment, such as heating, ventilating, and air conditioning
equipment. Id. at 12:38–42.
D. The Challenged Claims
Petitioner challenges claims 1–5, 16, and 17. Of those, claims 1, 16, and 17
are independent. The remaining challenged claims 2–5 ultimately depend from
claim 1. Claims 1 and 17 are illustrative of the challenged claims and are
reproduced, with emphasis added, as follows:
1. A photovoltaic roofing assembly, comprising:
a roofing membrane;
a plurality of photovoltaic modules disposed as a layer on top
of said roofing membrane, and
means for regulating the temperature of said photovoltaic
modules.
17. A method of making a photovoltaic roofing assembly,
comprising installing in the field a roofing membrane; installing in the
field pre-formed spacers in substantially straight lines; and installing
photovoltaic modules on top of said pre-formed spacers; whereby the
completed assembly limits the temperatures experienced by the
photovoltaic modules and eliminates the need for roofing penetrations
for hold-down of any of its components.
II. ANALYSIS
A. Claim Construction
Petitioner asserts that the claims should be given their broadest reasonable
construction. Pet. 10 (citing 37 C.F.R. § 42.100(b)). As Patent Owner points out,
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however, the ’788 patent is expired. Prelim. Resp. 4.5 Hence, Petitioner’s reliance
on 37 C.F.R. § 42.100(b) is misplaced, as that rule pertains only to claims “in an
unexpired patent.” Id.
“[T]he Board’s review of the claims of an expired patent is similar to that of
a district court’s review.” In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012). In
this context, claim terms generally are given their ordinary and customary
meaning, as understood by a person of ordinary skill in the art, at the time of the
invention, taking into consideration the language of the claims, the specification,
and the prosecution history of record because the expired claims are not subject to
amendment. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
banc).
Several claim terms of the ’788 patent were expressly construed by the
district court in the Sunlink case. See Ex. 1003 (district court’s construction of
certain terms of the ’788 patent and the related ’988 patent). For purposes of this
decision, and based on the record before us, we construe expressly certain claim
limitations as follows.
1. as a layer on top of said roofing membrane
Independent claim 1, which is directed to an apparatus, recites “a plurality of
photovoltaic modules disposed as a layer on top of said roofing membrane.”
(Emphasis added). Independent claim 16, which is directed to a method, requires
5 By terminal disclaimer, the term of the ’788 patent “shall not extend beyond the
expiration date of Pat. No. 5,316,592,” which appears to have expired no later than
August 31, 2012. Ex. 1001, 1; Ex. 3001, 1; 35 U.S.C. § 154(c)(1).
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“assembling photovoltaic modules having a bottom surface bonded to supporting
spacers, thereby forming integral units” and “installing said integral units as a
layer on top of said roofing membrane.” (Emphasis added).
Petitioner does not propose express constructions for these limitations. See
Pet. 10–12. Patent Owner argues that these limitations “mean[] that the
photovoltaic modules or integral units are arranged as an overlying surface on top
of the roofing membrane.” Prelim. Resp. 17. This is consistent with the district
court’s construction in the Sunlink case. See Ex. 1003, 2, ¶ 3 (“‘Modules disposed
as a layer on top of said roofing membrane’ is construed as: ‘modules that are
arranged in a manner that provides coverage of a surface.’”). It is also supported
by the specification. For example, Patent Owner directs us to the following
statement: “The photovoltaic module performs the multiple functions normally
provided by a roofing paver, including ballast, UV protection, and weather
protection for the membrane and insulation layers below.” Prelim. Resp. 17
(quoting Ex. 1001, 4:3–7). The specification also illustrates an array of
photovoltaic modules as an overlying surface on top of large sections of a roofing
membrane. Ex. 1001 at Fig. 9.
For purposes of this decision, we construe “as a layer on top of said roofing
membrane” to mean that the photovoltaic modules or integral units, as the case
may be, are arranged as an overlying surface on top of the roofing membrane.
2. means for regulating the temperature of said photovoltaic modules
35 U.S.C. § 112, ¶ 6 states:
An element in a claim for a combination may be
expressed as a means or step for performing a specified
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function without the recital of structure, material, or acts
in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts
described in the specification and equivalents thereof.
Independent claim 1 recites “means for regulating the temperature of said
photovoltaic modules.” (Emphasis added). This limitation, which is in means-
plus-function format, is presumably governed by § 112, ¶ 6. See Inventio AG v.
ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350, 1356 (Fed. Cir. 2011)
(“The use of the term ‘means’ triggers a rebuttable presumption that § 112, ¶ 6
governs the construction of the claim term.”). Petitioner does not provide any
rebuttal to this presumption, and does not discuss 35 U.S.C. § 112, ¶ 6. Pet. 10–11.
Instead, Petitioner proposes that it be construed as solely functional, such that it
covers “any component or mechanism causing or permitting a fluid or a substance,
such as air, to contact the bottom side of the photovoltaic module to permit heat
transfer from the photovoltaic module to the fluid or substance.” Pet. 11 (emphasis
added).
In contrast, Patent Owner argues that 35 U.S.C. § 112, ¶ 6 governs the
limitation, and directs us to the district court’s determination in the Sunlink case
that § 112, ¶ 6 governs. Prelim. Resp. 7 (citing Ex. 1003, 2, ¶ 9). On the present
record, we determine that § 112, ¶ 6 governs the limitation, as it uses the word
“means,” and no rebuttal has been presented. Thus, pursuant to the statute, the
“means for regulating the temperature of said photovoltaic modules” is to be
construed to cover the corresponding structure described in the specification and its
equivalents. See 35 U.S.C. § 112, ¶ 6.
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By rule, Petitioner was required to identify the corresponding structure in its
Petition. See 37 C.F.R. § 42.104(b)(3) (“Where the claim to be construed contains
a means-plus-function or step-plus-function limitation . . . the construction of the
claim must identify the specific portions of the specification that describe the
structure, material, or acts corresponding to each claimed function.”) (Emphasis
added). Petitioner failed to do this, and the Petition as to the claims at issue (i.e.,
claims 1–5) is denied for this reason alone.6
3. installing photovoltaic modules on top of said pre-formed spacers
Independent claim 17 recites “installing in the field pre-formed spacers in
substantially straight lines; and installing photovoltaic modules on top of said pre-
formed spacers.” The plain and ordinary meanings of these limitations require
that the installation of the pre-formed spacers in the field occurs prior to
installation of the photovoltaic modules on top of them. This is in contrast, for
example, to independent claim 16, in which photovoltaic modules and supporting
spacers are bonded together to form integral units that thereafter are installed on
the roofing membrane.
6 We are not required to deny the Petition on account of Petitioner’s failure to
comply with the rule. However, that result is warranted here, where Petitioner has
avoided the issue, despite well-established jurisprudence that 35 U.S.C. § 112, ¶ 6
presumably governs the limitation, and a district court’s determination that it does.
Furthermore, Petitioner was aware of the district court’s determination, as
Petitioner submitted it with its Petition as Exhibit 1003.
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B. Anticipation by Brown
Petitioner asserts that claims 1–5, 16, and 17 are anticipated by Brown.
Pet. 13–28.
Brown discloses a solar panel system supported on a subsurface such as a
flat roof. Ex. 1005, 4. Figure 5 of Brown is reproduced below.
Figure 5 illustrates “two rows [of] solar panels disposed behind one
another.” Ex. 1005, 6. More specifically, a first row of solar panels 12 are
supported in front of a second row of solar panels 112. Id. at 9. Within each row,
the panels are “disposed adjacently to one another.” Id. However, due to their
incline with respect to the roof, a large gap exists between the rows. See id. at
Fig. 5.
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1. Claims 1–5 and 16 As Anticipated By Brown7
Claim 1 recites (and dependent claims 2–5 require) “photovoltaic modules
disposed as a layer on top of said roofing membrane.” Claim 16 recites “installing
said integral units as a layer on top of said roofing membrane.” Petitioner does not
show that these limitations are met in Brown.
With respect to claim 1, Petitioner merely identifies the two rows of solar
panels 12 and 112 in Figure 5 of Brown and asserts that “[t]he set of panels form a
layer.” Pet. 15. But, each row of solar panels in Brown is at an incline to the roof,
such that a large gap exists between successive rows. They do not provide an
overlying surface to the roofing membrane.
With respect to claim 16, Petitioner asserts that the Brown solar panel
system “may include ‘numerous solar panels’ and ‘anchoring of the solar panels
can be achieved with a lower number of support blocks and at the same time, an
interconnection of all of the solar panels is achieved, which increases the stability
of the entire system.” Pet. 24 (quoting Ex. 1005, 5–6). The interconnection
referred to in Brown is via “shared support block[s].” Ex. 1005, 5; see also Fig. 5,
ref. 201, 203. The fact that Brown teaches numerous solar panels that are
7 As set forth above, the Petition is denied as to claims 1-5, on all requested
grounds, because it does not identify the structure in the specification of the
’788 patent corresponding to the function: “for regulating the temperature of said
photovoltaic modules.” However, we also address another deficiency common to
claims 1-5 as well as claim 16, which lacks the means-plus-function limitation
discussed above.
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interconnected via their support blocks does not establish that the panels are
arranged as an overlying surface on top of the roofing membrane.
Petitioner has not demonstrated a reasonable likelihood that it would prevail
with respect to claims 1–5 and 16 as anticipated by Brown.
2. Claim 17
Independent claim 17 recites “installing in the field pre-formed spacers in
substantially straight lines; and installing photovoltaic modules on top of said pre-
formed spacers.” Petitioner asserts that, in Brown, “the solar panels are mounted
on top of the spacers.” Pet. 27 (no citation provided). However, Petitioner does
not point to any evidence that, in Brown, the solar panels are installed on top of,
and after, the asserted spacers are installed. In fact, in its claim chart, Petitioner
omits this limitation altogether. See id. at 27–28.
Petitioner has not demonstrated a reasonable likelihood that it will prevail
with respect to claim 17 as anticipated by Brown.
C. Anticipation by Stiebel
Petitioner asserts that claims 1–5, 16, and 17 are anticipated by Stiebel.
Pet. 28–41.
Stiebel teaches “a mount for the installment of solar panels on a flat roof,
wherein the solar panels are provided with support struts that can be adjusted in
terms of length.” Ex. 1006, 2. An object of Stiebel is to provide “installation of
numerous interconnected solar panels.” Id.
Figure 1 of Stiebel is reproduced below.
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Figure 1 illustrates two solar panels 10 installed at an incline above flat
roof 1. The solar panels are mounted to support brackets 7 that are supported
above the roof by blocks 2. Ex. 1006, 4–5. As shown above, a large gap exists
between the first solar panel and the second solar panel behind it.
On an anterior end, each solar panel is mounted directly to angled portion 8
of a support bracket. Id. at 5. On a posterior end, each solar panel is mounted
indirectly to a support bracket via adjustable strut 11. Id. Each support block
partially supports two solar panels, and each support block is configured to be
connected to two other support blocks via tie rods 3. Id. at 4–5.
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1. Claims 1–5 and 16 As Anticipated By Stiebel8
Claims 1–5 require “photovoltaic modules disposed as a layer on top of said
roofing membrane.” Claim 16 requires “installing said integral units as a layer on
top of said roofing membrane.” To meet these limitations, Petitioner relies on the
teaching by Stiebel of “‘[t]he installation of solar panels of a flat roof’ and, more
particularly the ‘installation of numerous interconnected solar panels.’” Pet. 30
(quoting Ex. 1006 at 2, 5), 38 (same).
The solar panels in Stiebel are interconnected because they share support
blocks 2, which themselves are interconnected by tie rods 3. Ex. 1006, 4–5. The
fact that Stiebel teaches numerous solar panels that are interconnected via their
support blocks and tie rods does not establish that the panels are arranged as an
overlying surface on top of the roofing membrane. Because the panels are
inclined, a gap exists between successive solar panels, precluding the formation of
such an overlying surface. Id. at Fig. 1.
Petitioner has not demonstrated a reasonable likelihood that it would prevail
with respect to claims 1–5 and 16 as anticipated by Stiebel.
8 As set forth above, the Petition is denied as to claims 1-5, on all requested
grounds, because it does not identify the structure in the specification of the
’788 patent corresponding to the function: “for regulating the temperature of said
photovoltaic modules.” However, we also address another deficiency common to
claims 1-5 as well as claim 16, which lacks the means-plus-function limitation
discussed above.
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2. Claim 17
Independent claim 17 requires “installing photovoltaic modules on top of
said pre-formed spacers” that have been in installed in the field. Petitioner does
not point to any evidence that, in Stiebel, the solar panels are installed on top of,
and after, the asserted spacers are installed. See Pet. 39–41. In fact, in its claim
chart, Petitioner omits this limitation altogether. See id. at 40–41.
Petitioner has not demonstrated a reasonable likelihood that it would prevail
with respect to claim 17 as anticipated by Stiebel.
D. Anticipation by Russell
Petitioner asserts that claims 1–5, 16, and 17 are anticipated by Russell.
Pet. 41–54.
Russell teaches a mounting system for simplifying “the installation of PV
[photovoltaic] arrays on typical flat-roof commercial buildings.” Ex. 1007, 1129.
An array may consist of multiple PV panel assemblies, including, for example,
“12 PV panel assemblies.” Id. at 1130. Russell employs a “ballasted mounting
system” that “utilizes metal trays, equipped with special one-piece Roof-jacks” that
are “filled with gravel or other ballast to hold them in place” and that “avoid the
high cost and potential leaks from roof penetrations.” Pet. 41–42 (quoting
Ex. 1007 at 1129).
Figure 1 of Russell is reproduced below.
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Figure 1 shows a PV panel assembly poised for mating with a Roof-jack,
such that it will be inclined at a 15 degree angle relative to a flat roof. Ex. 1007,
1129.
1. Claims 1–5 and 16 As Anticipated By Russell9
Claims 1–5 require “photovoltaic modules disposed as a layer on top of said
roofing membrane.” Claim 16 requires “installing said integral units as a layer on
top of said roofing membrane.”
9 As set forth above, the Petition is denied as to claims 1-5, on all requested
grounds, because it does not identify the structure in the specification of the
’788 patent corresponding to the function: “for regulating the temperature of said
photovoltaic modules.” However, we also address another deficiency common to
claims 1-5 as well as claim 16, which lacks the means-plus-function limitation
discussed above.
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To meet these limitations, Petitioner relies on the teaching by Russell of the
“‘[i]nstallation of PV arrays on a typical flat-roof’ including a PV array consisting
of ‘12 PV panel assemblies.’” Pet. 43 (quoting Ex. 1007, 1129–30), 50 (same).
The fact that Russell teaches “PV arrays,” including an exemplary array having 12
PV assemblies, does not establish that the PV assemblies are arranged as an
overlying surface on top of the roofing membrane.10
Petitioner has not demonstrated a reasonable likelihood that it would prevail
with respect to claims 1–5 and 16 as anticipated by Russell.
2. Claim 17
Independent claim 17 requires “installing photovoltaic modules on top of
said pre-formed spacers” that have been installed in the field. Petitioner does not
point to any evidence that, in Russell, the PV arrays are installed on top of, and
after, the asserted spacers are installed. See Pet. 51–54. In fact, in its claim chart,
Petitioner omits this limitation altogether. See id. at 53.
10 Russell states that each PV panel assembly itself may be “a mechanical
assembly of seven Siemens Solar Industries’ M55j PV modules.” Ex. 1007, 1130
(emphasis added). However, Petitioner does not discuss these individual M55j PV
modules, or rely on them as the “photovoltaic modules” required in the claims.
See, e.g., Pet. 43 (claim chart mapping “photovoltaic modules” limitation to “PV
arrays” such as one having “12 PV panel assemblies”). Even if Petitioner had
relied on the seven M55j PV modules as opposed to the twelve PV panel
assemblies, it would need to show that the individual M55j PV modules are
arranged together as an overlying surface on top of the roofing membrane.
Petitioner has not done this.
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Petitioner has not demonstrated a reasonable likelihood that it would prevail
with respect to claim 17 as anticipated by Russell.
III. CONCLUSION
Upon consideration of the Petition and Preliminary Response, we determine
that there is not a reasonable likelihood that Petitioner would prevail on any of the
grounds of unpatentability raised with respect to any of the claims challenged in
the Petition. We, therefore, deny the Petition. See 35 U.S.C. § 314(a); 37 C.F.R.
§ 42.108(c).
IV. ORDER
Accordingly, it is
ORDERED that the Petition is denied and no trial is instituted.
Petitioner:
Matthew Lowrie
Aaron Moore
Patent Owner:
Joshua Griswold
Dan Smith