Die Strategie, das Produkt im Patent in Frage zu stellen,da es weitere,von Hanwha ungenannte Herstellungs-/Prozessvarianten gibt ,scheint erstmal wohl nicht auf Zustimmung zu stoßen...
UNITED STATES INTERNATIONAL TRADE COMMISSION WASHINGTON, D.C.
Before the Honorable MaryJoan McNamara Administrative Law Judge
In the Matter of
CERTAIN PHOTOVOLTAIC CELLS Investigation No. 337-TA-1151 AND PRODUCTS CONTAINING SAME
COMMISSION INVESTIGATIVE STAFF’S RESPONSE TO RESPONDENTS’ MOTION FOR SUMMARY DETERMINATION OF INVALIDITY UNDER 35 U.S.C. § 112 [MOT. NOS. 1151-0024]
On September 20, 2019 the Respondents1 filed a motion for summary determination that
the asserted claims of the asserted U.S. Patent No. 9,893,215 (“the ’215 patent”) are invalid for
lacking written description support. See Motion Docket No. 1151-0024 (“Mot.” and “Memo”).
More specifically, Respondents contend that the claims lack written description support because
the specification/prosecution history describes only a single method of deposition for the “first
dielectric layer,” and accordingly, claims encompassing a “first dielectric layer” that is
grown/deposited by a method other than that taught in the specification lack sufficient written
description support. Mot. at 1-2.
1 JinkoSolar Holding Co.; Ltd., JinkoSolar (U.S.) Inc.; Jinko Solar (U.S.) Industries Inc.; Jinko Solar Co., Ltd.; Zhejiang Jinko Solar Co., Ltd.; Jinko Solar Technology Sdn. Bhd.; LONGi Green Technology Co., Ltd.; LONGi Solar Technology Co., Ltd.; LONGi (H.K.) Trading Ltd.; LONGi (Kuching) Sdn. Bhd.; Taizhou LONGi Solar Technology Ltd.; Zhejiang LONGi Solar Technology Ltd.; Hefei LONGi Solar Technology Ltd.; and LONGi Solar Technology (U.S.) Inc.; REC Solar Holdings AS; REC Solar Pte. Ltd.; and REC Americas, LLC
More specifically, the only asserted independent claim 12 requires:
12. A solar cell comprising:
a silicon substrate;
a first dielectric layer comprising aluminium oxide on a surface of the silicon substrate; and
a second dielectric layer directly on a surface of the first dielectric layer, materials of the first dielectric layer and the second dielectric layer differing and hydrogen being embedded into the second dielectric layer;
wherein the first dielectric layer has a thickness of less than 50 nm and is interposed between the surface of the silicon substrate and the second dielectric layer.
JMX-0001 at Claim 12 (emphasis added). Asserted claims 13 and 14 depend from independent
claim 12. Id. at Claims 13 and 14. Respondents contend that because the dependent claims
encompass the same “non-described subject matter,” they should similarly be found invalid.
Memo at 2.
For the reasons set forth below, the Commission Investigative Staff (“Staff”) does not
support Respondents’ motion. I. ANALYSIS There is nothing in the asserted apparatus claims requiring the use of any method to
obtain the claimed apparatus. See JMX-0001 at Claims 12-14. In addition, there was an agreed
to construction for the claim limitation “aluminum oxide,” and the agreed construction did not
require interpreting the limitation as a product-by-process limitation. See Order No. 24 at Chart
1 (listing disputed claim terms and agreed to construction for “aluminum oxide”). Further, the
Markman Order determined that “a first dielectric layer comprising aluminium oxide on a
surface of the silicon substrate” is not limited by method steps. Order No. 24 at 11 (“while the
method of Hoex may provide a silicon oxide layer as a result of the ALD process, the patent
claim to a ‘solar cell’ is not limited by method steps described in the specification such as the
method of Hoex.”). Thus, in view of the Markman Order’s analysis with respect to “on a surface
of the silicon substrate,” there is no dispute that asserted claims 12-14 of the ‘215 patent are pure
apparatus claims (i.e. that are not limited to a particular method) as opposed to claims having
product-by-process limitations. Id. Because the claims are pure product claims, the current2 written description law for pure
apparatus claims should be applied. Research Corp. v. Microsoft Corp., 627 F.3d 859, 873 (Fed.
Cir. 2010) (“Apparatus claims do not need to recite every method of making the claimed
apparatus.”); Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635 F.3d
1373, 1382 (Fed. Cir. 2011) (“The district court also failed to distinguish in its written
description analysis between [the patentee’s] only asserted product claim . . . and [the patentee’s] method claims . . . .”).3 Under this caselaw, the disclosure of a single method of manufacturing
the claimed apparatus provides sufficient written description support.
2 In the Staff’s view, there appears to be disconnect between the general written description standard that requires showing “the patentee had possession of the claimed invention” and the written description standard for pure apparatus claims that allows all variations of the claimed apparatus so long as the inventor was in possession of one method of making the apparatus. However, the Staff is not aware of a pure product claim that has been found invalid based on lack of written description support because only one method of making the apparatus was disclosed. By way of example, in Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d 1261, 1269 (Fed. Cir. 2012), where the court held products claims can be limited by process, the claim at issue included a product-by-process limitation “silicon dioxide layer being formed by low pressure chemical vapor deposition comprising the use of tetraethylorthosilicate.” Here no such process language expressly exists in the claims, nor have the limitations been construed to require a process.
3 The Staff has not included a responsive statement of facts because the Staff does not dispute any facts therein (i.e. the specification of the ‘215 patent speaks for itself). Instead, the Staff does not support Respondents’ motion because the facts do not show that the apparatus claims, as construed in Order No. 24, lack sufficient written description support.
In the motion, Respondents argue that the pure product written description standard
should not apply. However, Respondents’ argument is premised on their position (pre-Markman
Order) that the intrinsic evidence requires the claimed aluminum oxide claim element be limited
by process. See Memo at 19-20 (arguing pure product written description need not apply
because “the ‘215 patent and its prosecution history contain express statements tying the invention to ALD aluminum oxide4 deposited directly on the substrate.”). Because the Markman Order resolves that the claims are pure apparatus claims,5 and
because Respondents do not dispute that at least one method of making the claimed product was disclosed in the specification, Respondents’ motion should be denied at this time.6 See Mot. at 2
(“the inventors were in possession only of an ‘invention’ that included a ‘first dielectric layer’ of
ALD-deposited aluminum oxide.”). II. CONCLUSION For these reasons, the Staff does not support the Respondents’ motion for a summary
determination of invalidity based on a lack of written description support.
4 The Staff notes that the parties agreed to a construction for “aluminum oxide” and the agreed-to construction was adopted in the Markman Order. Respondents’ characterization of “ALD aluminum oxide” is not reflective of the claims as construed.
5 The Order also provides that “[n]o re-argument of the claims construed in the Order may occur. Order No. 24 at 12.
6 To the extent the scope of the asserted claims is later interpreted based on the method of manufacturing taught in the specification, the Staff reserves the right to revisit this motion.
Dated: October 2, 2019 Respectfully submitted,
s/ Monisha Deka Margaret D. Macdonald, Director Anne Goalwin, Supervisory Attorney Monisha Deka, Investigative Attorney OFFICE OF UNFAIR IMPORT INVESTIGATIONS U.S. International Trade Commission 500 E. Street, S.W., Suite 401 Washington, D.C. 20436 (202) 205-2746 (202) 205-2158 (Facsimile)