Court Grants Zep Solar’s Motion to Dismiss Rival’s Non-Infringement DJ


In a previous post, I discussed a patent infringement suit filed by solar installer Akeena Solar against Zep Solar, Inc. (Zep), groSolar and High Sun Technology, Inc. (HST) in the Northern District of California. 

Akeena’s complaint (akeena_complaint.pdf) accused groSolar and HST of infringing U.S. Patent No. 7,406,800 (‘800 Patent”), entitled “Mounting system for a solar panel” and directed to an integrated module frame and racking system for solar panels.   According to the complaint, Zep’s solar panel mounting system infringes the ‘800 Patent, and groSolar has teamed up with Zep to distribute and install Zep systems.

The complaint also included a claim against Zep and HST for a declaratory judgment (DJ) that Akeena does not infringe Zep’s U.S. Patent No. 7,592,537 (‘537 Patent), entitled “Method and apparatus for mounting photovoltaic modules.” 


The ‘537 Patent is directed to a photovoltaic module mounting system (10) comprising two adjacent interlocking PV module frames (12L, 12R).  Each frame encloses the perimeter of a PV laminate (14) in recesses (23L, 23R).  The interlocking mechanism may comprise a separate male coupling member (28) inserted into female channel portions (26L, 26R).

Last month the court dismissed Akeena’s non-infringement DJ claim, finding there was no actual controversy between the parties about the ‘537 Patent (zep_order.pdf).

Akeena had alleged there was an actual controversy sufficient for DJ jurisdiction because of certain e-mails and telephone conversations between the parties including a Zep e-mail to Akeena’s counsel to bring the ‘537 Patent to Akeena’s attention, an e-mail from Zep’s CEO to Akeena’s president stating that “Zep’s legal team is ready for a fight if that is what is needed,” and a telephone conversation in which Zep’s CEO allegedly told Akeena’s president that he would “blow up” Akeena’s patent.

But the court found that the communications at issue were made in response to Akeena’s infringement threats and merely signaled Zep’s intention to preserve its legal rights:

Significantly, Zep’s communications to Plaintiffs have all been in response to Plaintiffs’ accusations of infringement and direct threats of an infringement lawsuit.  Objectively, all of Zep’s statements are reasonably read merely as preserving Zep’s legal rights, including the right to attack the validity of Plaintiffs’ patent and to assert Zep’s patent if sued by Plaintiffs.

The court also found it significant that, since the lawsuit was filed, Zep hasn’t asserted a counterclaim that Akeena infringes the ‘537 Patent.

Eric Lane Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.