Notice2025-01310
Certain Photovoltaic Connectors and Components Thereof; Notice of a Commission Final Determination Finding no Violation of Section 337; Termination of the Investigation
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Published
January 21, 2025
Issuing agencies
International Trade Commission
Abstract
Notice is hereby given that the U.S. International Trade Commission ("Commission") has determined to reverse in part a final initial determination ("FID") issued by the presiding administrative law judge ("ALJ") finding a violation of section 337 of the Tariff Act of 1930, as amended. The investigation is terminated with a finding of no violation.
Full Text
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<title>Federal Register, Volume 90 Issue 12 (Tuesday, January 21, 2025)</title>
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[Federal Register Volume 90, Number 12 (Tuesday, January 21, 2025)]
[Notices]
[Pages 7157-7158]
From the Federal Register Online via the Government Publishing Office [<a href="http://www.gpo.gov">www.gpo.gov</a>]
[FR Doc No: 2025-01310]
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INTERNATIONAL TRADE COMMISSION
[Investigation No. 337-TA-1365]
Certain Photovoltaic Connectors and Components Thereof; Notice of
a Commission Final Determination Finding no Violation of Section 337;
Termination of the Investigation
AGENCY: U.S. International Trade Commission.
ACTION: Notice.
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SUMMARY: Notice is hereby given that the U.S. International Trade
Commission (``Commission'') has determined to reverse in part a final
initial determination (``FID'') issued by the presiding administrative
law judge (``ALJ'') finding a violation of section 337 of the Tariff
Act of 1930, as amended. The investigation is terminated with a finding
of no violation.
FOR FURTHER INFORMATION CONTACT: Paul Lall, Office of the General
Counsel, U.S. International Trade Commission, 500 E Street SW,
Washington, DC 20436, telephone (202) 205-2043. Copies of non-
confidential documents filed in connection with this investigation may
be viewed on the Commission's electronic docket (EDIS) at <a href="https://edis.usitc.gov">https://edis.usitc.gov</a>. For help accessing EDIS, please email
<a href="/cdn-cgi/l/email-protection#4d0809041e7e0528213d0d383e24392e632a223b"><span class="__cf_email__" data-cfemail="0e4b4a475d3d466b627e4e7b7d677a6d20696178">[email protected]</span></a>. General information concerning the Commission may
also be obtained by accessing its internet server at <a href="https://www.usitc.gov">https://www.usitc.gov</a>. Hearing-impaired persons are advised that information on
this matter can be obtained by contacting the Commission's TDD
terminal, telephone (202) 205-1810.
SUPPLEMENTARY INFORMATION: On June 9, 2023, the Commission instituted
this investigation based on a complaint filed on behalf of Shoals
Technologies Group, LLC (``Shoals Technologies'') of Portland,
Tennessee. 88 FR 37905-06 (June 9, 2023). The complaint alleges
violations of section 337 of the Tariff Act of 1930, as amended, 19
U.S.C. 1337 (``section 337''), based upon the importation into the
United States, the sale for importation, or sale within the United
States after importation of certain photovoltaic connectors and
components thereof by reason of infringement of certain claims of U.S.
Patent Nos. 10,553,739 (``the '739 patent'') and 10,992,254 (``the '254
patent''). The Commission's notice of investigation (``NOI'') named the
following eight respondents: (1) Hikam America, Inc. of Chula Vista,
California; (2) Hikam Electr[oacute]nica de M[eacute]xico, S.A. de C.V.
of Mexicali, Mexico; (3) Hikam Tecnologia de Sinaloa of Guasave,
Mexico; (4) Hewtech Philippines Corp. of Laguna, Philippines; (5)
Hewtech Philippines Electronics Corp. of Pampanga, Philippines; (6)
Hewtech (Shenzhen) Electronics Co., Ltd. of Shenzhen, China
(collectively the ``Hikam Respondents''); (7) Voltage, LLC
(``Voltage'') of Chapel Hill, North Carolina; and (8) Ningbo Voltage
Smart Production Co. (``Ningbo Voltage'') of Ningbo, China
(collectively ``Respondents''). Id. The Office of Unfair Import
Investigations (``OUII'') was also named as a party in this
investigation. Id. at 37906.
On August 15, 2023, the Commission amended the complaint and NOI to
add allegations of infringement against Voltage related to certain
claims of U.S. Patent No. 11,689,153 (``the '153 patent''). See Order
No. 5 (Jul. 18, 2023), unreviewed by Comm'n Notice, 88 FR 56882-83
(Aug. 21, 2023).
The presiding ALJ held a Markman hearing on December 13, 2023, and
on February 20, 2024, issued an order addressing claim construction for
the '739, '254, and '153 patents. See Order No. 16 (Feb. 20, 2024)
(``Markman Order''). On February 28, 2024, Shoals filed a motion for
reconsideration of the Markman Order's construction of the term
``engaged with'' in claims 1 and 10 of the '739 patent. On March 4 and
5, 2024, Respondents and OUII filed oppositions to the motion,
respectively.
On March 11, 2024, the Commission terminated the following claims
from the investigation based on Shoals' withdrawal of the complaint as
to those claims: claims 2, 3, 6, 8, 9, 11, 12, and 15-18 of the '739
patent, claims 2-4, 8-12, 14, and 15 of the '254 patent, and claims 2,
3, 6, and 15-17 of the '153 patent. See Order No. 15 (Feb. 9, 2024),
unreviewed by Comm'n Notice (March 11, 2024).
On March 25, 2024, the Commission terminated the '254 patent from
this investigation based on Shoals' withdrawal of the complaint as to
that patent. See Order No. 19 (Feb. 28, 2024), unreviewed by Comm'n
Notice (March 26, 2024).
On April 19, 2024, the Commission determined not to review the
ALJ's grant of summary determination that Shoals has not satisfied the
technical prong of the domestic industry requirement for the '739
Patent and, thus, found no violation as to the '739 patent. Order No.
20 (March 6, 2024), unreviewed by Comm'n Notice (Apr. 19, 2024). In
Order No. 20, the ALJ also denied Shoals' motion for reconsideration of
the Markman Order. Id. Only the '739 patent was asserted against the
Hikam Respondents. See Comm'n Notice (Apr. 19, 2024); Am. Compl. at ]
66. Accordingly, the Hikam Respondents were effectively terminated from
the investigation as of the termination of the '739 patent. On June 18,
2024, Shoals filed a notice of appeal with the U.S. Court of Appeals
for the Federal Circuit appealing the Commission's finding of no
violation as to the '739 patent. See Case No. 24-1991, Notice of
Docketing (Fed. Cir. June 24, 2024). On December 18, 2024, the Federal
Circuit issued an order dismissing the appeal based on a joint
stipulation of voluntary dismissal. See Case No. 24-1991, Order (Fed.
Cir. Dec. 18, 2024).
On April 26, 2024, the Commission terminated the investigation with
respect to asserted claim 8 of the '153 patent based on Shoals'
withdrawal of the complaint as to that claim. See
[[Page 7158]]
Order No. 29 (April 2, 2024), unreviewed by Comm'n Notice (Apr. 26,
2024).
The ALJ held an evidentiary hearing on March 18-22, 2024. As of the
hearing, Shoals asserted claims 1, 11-14, 18, 21, 23, and 24 of the
'153 patent against the accused Voltage Trunk Bus, and Voltage sought
adjudication of the Voltage Alternative Design [``AD''] Trunk Bus with
respect to and claims 21 and 24 of the '153 patent. Shoals also
asserted that its DI product practices claims 1 and 21 of the '153
patent for purposes of the DI requirement.
On August 30, 2024, the presiding ALJ issued the FID, finding that
there has been a violation of section 337 in the importation into the
United States, the sale for importation, and/or the sale in the United
States after importation of certain photovoltaic connectors and
components thereof with respect to certain claims of the '153 patent.
Specifically, the FID finds as to the '153 patent that: (1) the Voltage
Trunk Bus and Voltage AD Trunk Bus have been imported into the United
States, sold for importation, and/or sold within the United States
after importation; (2) the Voltage Trunk Bus satisfies claims 1, 11-14,
and 18; (3) the Voltage Trunk Bus does not satisfy claims 21, 23, and
24; (4) the Voltage AD Trunk Bus does not satisfy claims 1, 11-14, 18,
21, 23, and 24; (5) Shoals has satisfied the technical prong of the DI
requirement; (6) Shoals has satisfied the economic prong of the DI
requirement; and (7) Voltage has not shown that claims 1, 11-14, 18,
21, 23, and 24 are invalid under 35 U.S.C. 112 for lack of written
description and/or indefiniteness.
On September 13, 2024, the presiding ALJ issued a Recommended
Determination on Remedy and Bonding (``RD''). The RD recommends that
the Commission issue a limited exclusion order against Voltage in the
event it finds a violation of section 337 and impose a bond of 100
percent during the period of Presidential Review.
On October 15 and 16, 2024, Shoals Technologies and Voltage,
respectively, filed a statement on the public interest pursuant to
Commission Rule 210.50(a)(4), 19 CFR 210.50(a)(4). On October 15, 2024,
Strata Clean Energy of Durham, N.C. filed a statement on the public
interest in response to the Commission's Federal Register notice. See
89 FR 76869-70 (Sept. 19, 2024).
On September 16, 2024, Shoals filed a petition for review of the
FID, arguing that the ALJ should not have considered respondents'
redesign product, the Voltage AD Trunk Bus, as being within the scope
of the investigation. On the same day, Respondents also filed a
petition for review of the following of the FID's findings: (1) the
FID's construction of the term ``aperture'' recited in the asserted
claims of the '153 patent; (2) the FID's finding that the asserted
claims of the '153 patent are not invalid under 35 U.S.C. 112 for lack
of written description and/or indefiniteness; (3) the FID's finding
that Shoals has satisfied the domestic industry requirement with
respect to an article protected by the '153 patent; and (4) the FID's
determination to exclude the testimony of Voltage's invalidity expert.
Also on the same day, OUII filed a petition for review of the following
of the FID's findings: (1) the FID's construction of the ``aperture''
terms; (2) the FID's finding that Shoals' has satisfied the technical
prong of the domestic industry requirement; and (3) the FID's
determination to exclude the testimony of Voltage's invalidity expert.
On September 24, 2024, Shoals, Voltage and OUII each filed
responses to the respective petitions for review.
On October 4, 2024, Voltage filed a notice of supplemental
authority, and on October 7, 2024, Shoals filed a response to the
notice. The Voltage Notice attached a copy of a September 30, 2024
decision from the U.S. Patent and Trademark Office's Patent Trial and
Appeal Board denying a petition by Voltage to institute post-grant
review proceedings. See Voltage Notice, Ex. A (Voltage v. Shoals,
PGR2024-00022).
On November 13, 2024, the Commission determined to review the FID
in part. See 89 FR 91424-27 (Nov. 19, 2024) (the ``November 13, 2024
Commission Notice''). Specifically, the Commission reviewed the FID's:
(1) construction of the ``aperture'' terms recited in the asserted
claims of the '153 Patent; (2) finding that the accused products
infringe the asserted claims of the '153 patent; (3) finding that the
asserted claims of the '153 patent are not invalid under 35 U.S.C. 112
for lack of written description and/or indefiniteness; and (4) finding
that Shoals has satisfied the domestic industry requirement of section
337, including the FID's findings concerning the technical prong and
the economic prong. Id. at 91426. The Commission did not review the
remaining findings in the FID.
In connection with its review, the Commission requested responses
from the parties to certain question concerning the issues under
review. Id. at 91426. The Commission also requested parties to the
investigation, interested government agencies, and any other interested
parties to file written submissions on the issues of remedy, the public
interest, and bonding. Id.
On November 27, 2024, Shoals, Voltage and OUII each filed a
response to the Commission's November 13, 2024 notice. On December 5,
2024, Shoals, Voltage and OUII each filed a respective reply.
Having reviewed the record of the investigation, including the FID,
the parties' petitions for review and related submissions, and the
parties' responses to the Commission's November 13, 2024 Notice, the
Commission has determined to: (1) construe the ``aperture'' terms
recited in the asserted claims of the '153 Patent such that the entire
``drop line'' recited in the claims means ``the entire length of the
underlying `drop line/wire' within the undermold (and compression lug),
just as the `feeder cable' equates to the entire length of the
underlying cable within the undermold (and compression lug)''; (2)
reverse the FID's finding that the accused Voltage Trunk Bus satisfies
claims 1, 11-14, and 18 of the '153 patent; and (3) reverse the FID's
finding that Shoals' asserted domestic industry products satisfy the
limitations of claims 1 and 21 of the '153 patent. The Commission takes
no position on the other issues under review. Concurrent with this
notice, the Commission has issued an opinion further explaining its
determination.
The investigation is terminated with a finding of no violation of
section 337.
The Commission's vote on this determination took place on January
14, 2025.
The authority for the Commission's determination is contained in
section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337), and
in part 210 of the Commission's Rules of Practice and Procedure (19 CFR
part 210).
By order of the Commission.
Issued: January 14, 2025.
Lisa Barton,
Secretary to the Commission.
[FR Doc. 2025-01310 Filed 1-17-25; 8:45 am]
BILLING CODE 7020-02-P
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