The USPTO director has rejected 3 IPR petitions against First Solar’s TOPCon patents, giving the company a procedural win in its ongoing patent disputes
The denied petitions were filed by JinkoSolar, Mundra Solar, and Canadian Solar, and relate to US patents covering TOPCon cell manufacturing methods
First Solar says it acquired these patents through its acquisition of TetraSun in 2013
First Solar has secured a procedural win in its ongoing patent disputes after the US Patent and Trademark Office (USPTO) declined to review challenges to its TOPCon patents.
The agency’s director denied 3 Inter Partes Review (IPR) applications filed last year by JinkoSolar, Mundra Solar, and Canadian Solar, allowing First Solar’s related patent infringement lawsuits to move forward, the US solar PV manufacturer announced. It has filed patent infringement lawsuits against these companies in the US District Court for the District of Delaware.
According to First Solar, JinkoSolar, and Canadian Solar tried to challenge the validity of its US Patent No. 9,130,074, while Mundra Solar requested a review of its US Patent No. 9,666,732. Both patents relate to methods used to manufacture TOPCon crystalline silicon (c-Si) solar cells.
According to First Solar, the patent review requests were rejected on November 20 (JinkoSolar), December 11 (Mundra Solar), and December 18 (Canadian Solar), respectively. Incidentally, Canadian Solar recently registered a win against Maxeon Solar Technologies as the latter’s TOPCon patent infringement claims were invalidated by the USPTO (see Canadian Solar Wins PTAB Ruling Against Maxeon Patent Claims).
Even though First Solar’s focus technology is cadmium telluride (CdTe), which is a silicon-free solar PV technology, it says it acquired TOPCon patents through its acquisition of TetraSun in 2013.
In July 2024, it launched TOPCon cell patent infringement investigations against several manufacturers (see First Solar Initiates Infringement Investigation).
Its patents include issued patents in several countries, namely the US, Australia, Canada, China, the EU, Hong Kong, Japan, Mexico, Malaysia, Singapore, South Korea, the UAE, and Vietnam, and remain valid until 2030 or later. The portfolio also includes its patent applications in the markets of the EU, Japan, Hong Kong, the UAE, and Vietnam.
“We believe that this is consistent with USPTO’s ‘Settled Expectations’ doctrine, which is underpinned by the principle that the longer a patent has been in force, the stronger and more settled the patent owner's expectations should be,” stated First Solar Executive Vice President, General Counsel and Secretary, Jason Dymbort. “The patents at issue in each of these matters were issued in 2015 and 2017, respectively, long before each of these manufacturers’ petitions were filed.”
Meanwhile, manufacturers are mutually resolving their TOPCon disputes elsewhere (see Astronergy & JA Solar End Global TOPCon Patent Dispute).
