An Oregon federal judge on Friday refused to clear SolarWorld Industries America Inc. of allegations it sold photovoltaic cells with a type of conductive paste that infringed a DuPont Co. patent, ruling there were factual disputes that a jury should consider.
U.S. Magistrate Judge Dennis James Hubel denied a motion for summary judgment lodged by SolarWorld and co-defendant Heraeus Precious Metals North America Conshohocken LLC, which makes silver photovoltaic pastes that SolarWorld incorporates in solar cells, according to the suit. SolarWorld and Heraeus sought a ruling that they had not infringed DuPont’s U.S. Patent Number 8,158,504.
In shooting down the summary judgment motion, Judge Hubel found there was a legitimate factual dispute regarding DuPont’s infringement allegations under the doctrine of equivalents that would be more appropriate for a jury to hear, according to the judge’s order.
“It is apparent to the court from the record already existing in this case that there are genuine factual issues as to whether Heraeus’s accused products infringe the ‘504 patent under the [doctrine of equivalents],” the magistrate said.
Also on Friday, Judge Hubel issued a separate order ruling on DuPont’s motion to dismiss counterclaims lodged against it by Heraeus. The counterclaims alleged that DuPont had engaged in unfair competition under the Lanham Act by issuing a press release “falsely representing” that Heraeus had stolen intellectual property and infringed DuPont’s patents.
Judge Hubel on Friday kept in place the Heraeus counterclaim regarding the intellectual property theft issue, but dismissed the portion of the counterclaims regarding the patent infringement issue. He did, however, grant Heraeus an opportunity to amend the dismissed part of the counterclaim.
DuPont spokesman Daniel Turner said Monday that the company “is pleased with the court’s rulings and is committed to enforcing its intellectual property.”
An attorney representing Heraeus and SolarWorld, Matthew Moore of Latham & Watkins LLP, told Law360 he was also happy with Friday’s rulings. As a result of the summary judgment ruling, he said, DuPont’s patent infringement claim would be refined to one under the doctrine of equivalents.
“We think the results are favorable because the court has allowed us to keep the Lanham Act claim and has narrowed the infringement claim,” Moore said.
DuPont first lodged the suit in June 2012, alleging that Heraeus and SolarWorld infringed the ‘504 patent. Heraeus’ H92XX and H94XX pastes allegedly infringed the DuPont patent, according to the complaint, and SolarWorld sold solar cells containing those Heraeus-made pastes.
“This case demonstrates that DuPont will act swiftly to enforce our intellectual property rights against any infringers and protect our investment and commitment to DuPont shareholders and customers,” David B. Miller, president of DuPont’s electric unit, said in a statement at the time.
Heraeus eventually lobbed counterclaims accusing DuPont of issuing an allegedly misleading press release that implied that Heraeus had engaged in “intellectual property theft” and had infringed DuPont’s patents.
Additionally, in April, Heraeus and SolarWorld filed a motion for summary judgment, asking the court to find they had not infringed the ‘504 patent. Judge Hubel on Friday denied that motion.
The suit regarding the ‘504 patent followed an earlier complaint, lodged in September 2011, which accused Heraeus of infringing another DuPont patent by making the H92XX and H94XX pastes. SolarWorld was not named as a defendant in the September 2011 suit, which is pending in Delaware federal court.
DuPont is represented by Peter E. Heuser and Devon Zastrow Newman of Schwabe Williamson & Wyatt PC, as well as by Matthew W. Brewer, Sean G. Gallagher, Adam K. Mortara and Asha L.I. Spencer of Bartlit Beck Herman Palenchar & Scott LLP.
SolarWorld and Heraeus are represented by Maximilian A. Grant, Matthew J. Moore, Limor L. Rabie and Elizabeth M. Roesel of Latham & Watkins LLP, Steven K. Blackhurst of Ater Wynne LLP and Alexander C. Johnson Jr. of Marger Johnson & McCollom PC.
The case is E.I. DuPont De Nemours & Co. v. Heraeus Precious Metals North America Conshohocken LLC et al., case number 3:12-cv-01104, in the U.S. District Court for the District of Oregon.