Tigo Energy Inc. v. SunSpec Alliance

[4] 5 UNITED STATES DISTRICT COURT 6 NORTHERN DISTRICT OF CALIFORNIA [7] 8 TIGO ENERGY INC., Case No. 23-cv-00762-WHO 9 Plaintiff, ORDER GRANTING IN PART AND 10 v. DENYING IN PART MOTION TO DISMISS 11 SUNSPEC ALLIANCE, Re: Dkt. No. 19 Defendant. [13] 14 Defendant SunSpec Alliance (“SunSpec”) moves to dismiss this case brought by plaintiff 15 Tigo Energy Inc. (“Tigo”), which alleges what appears to be a novel theory: that SunSpec 16 infringed on one of its patents when it set an industry standard for a “rapid shutdown system” 17 (“RSS”) for solar panels. 18 The motion is DENIED in part and GRANTED in part, with leave to amend. Tigo has 19 plausibly alleged that SunSpec infringed on the asserted claims, literally and under the doctrine of 20 equivalents, by directing its affiliated laboratories to test third party products in accordance with 21 its specification. By testing those products, the labs plausibly “use” or “make” the claimed 22 systems, and by allegedly doing so under SunSpec’s direction and control, it is plausible that 23 SunSpec is vicariously liable. These same allegations support a theory of induced infringement as 24 it relates to the laboratories. 25 The other theories of liability based upon the alleged acts by SunSpec, its members, 26 customers, and solar system installers do not plausibly show infringement, at least as pleaded. 27 Tigo makes a number of allegations relating to these actors, but does not adequately connect them 1 Tigo’s infringement claim depends on the alleged acts by SunSpec’s members, customers, and 2 solar system installers, it is DISMISSED with leave to amend. 3 BACKGROUND 4 Tigo develops technology for “module-level rapid shutdown” of photovoltaic panels, 5 commonly known as solar panels. See First Amend. Compl. (“FAC”) [Dkt. No. 17] ¶ 6. As Tigo 6 explains in its opposition, “[i]n the rooftop solar industry, ‘rapid shutdown’ is [a] safety feature 7 that enables a solar system to be shut down quickly at need”—for example, if firefighters need to 8 access an area where a solar system is installed or if supplying the system with power would be 9 dangerous. See Oppo. [Dkt. No. 21] 4:2-8. 10 Central to this litigation is U.S. Patent No. 8,933,321 (“the ’321 Patent”), of which Tigo is 11 the owner and assignee of all substantial rights. FAC ¶¶ 10-11. Issued in January 2015, the ’321 12 Patent discloses “[s]ystems and methods . . . for automatically or remotely rendering a solar array 13 safe during an emergency or maintenance.” See FAC, Ex. 1 (“’321 Patent”), Abstract. It recites 14 20 claims, two of which are at issue. See id. at 11:17-12:56 . Claim 1 recites: [15] A system comprising: [16] a watchdog unit coupled between a solar module and a power bus, the power bus 17 configured to connect a plurality of solar modules to an inverter, the watchdog unit having: [18] a local controller configured to monitor a communication from a central controller [19] remote from the solar module and determine whether the communication has been 20 interrupted for a time period longer than a predetermined number of allowed skips; and [21] at least one switch configured to disconnect the solar module from the power bus in 22 response to a determination by the location controller than the communication from the central controller has been interrupted for a time period longer than the [23] predetermined number of allowed skips; [24] wherein the watchdog unit is configured to connect the solar module to the power 25 bus when the communication is not interrupted. [26] Id. at 11:18-36 . 27 Claim 12 recites: [1] a watchdog device coupled between a solar module and a power bus, the power bus 2 configured to connect a plurality of solar modules to an inverter, the watchdog device configured to: [3] verify communication with a central controller remote from the solar module; and [4] shutdown the solar module from the power bus if communication with the central [5] controller cannot be verified for a time period longer than a predetermined number 6 of allowed skips. Id. at 12:11-20 . [7] SunSpec is an “information standards and certification organization” that has “published [8] specifications concerning rapid shutdown technology” that align with the National Electric Code, [9] including a requirement that solar power systems installed on or in buildings “include a rapid [10] shutdown function to reduce shock hazard for emergency responders.” FAC ¶¶ 12-15. According [11] to the FAC, SunSpec “provides testing and certification” that allows its members to verify that [12] their products adhere to SunSpec specifications. See id. ¶ 18 . When a SunSpec member wants to [13] certify one of its products, it allegedly pays SunSpec a fee, and a SunSpec-authorized laboratory [14] performs the tests required by the specification “under SunSpec’s direction and control.” Id. [15] SunSpec then receives a report on the testing and determines whether to certify the product as [16] compliant with its specification. Id. [17] Two specifications are at issue: an August 21, 2017, Communication Signal for Rapid [18] Shutdown SunSpec Interoperability Specification (“the RSD Specification”) and a March 9, 2021, [19] Communication Signal for Rapid Shutdown Test Specification (“the RSD Test Specification”). [20] Id. ¶ 14 ; see also id., Exs. 2-3. It appears from the papers that the difference between the two is [21] that the RSD Specification is the specification for the rapid shutdown technology itself, while the [22] RSD Test Specification outlines certain tests that may be performed to determine whether a [23] product meets the RSD Specification. See id. ¶ 18 ; see also id., Exs. 2-3. [24] According to Tigo, “at least Claims 1 and 12 of the ’321 Patent are necessary to the [25] SunSpec RSD Specification.” Id. ¶ 23 . The FAC alleges that SunSpec infringes these claims “by [26] directing and controlling SunSpec authorized test laboratories to test SunSpec members’ products [27] 1 Alternatively, it alleges that SunSpec induces infringement “by directing and controlling” the labs 2 “to perform the tests required by the RSD Test Specification, which involve making and using of a 3 system that practices the RSD Specification.” Id. 4 The FAC makes a host of other allegations that Tigo contends show either literal 5 infringement, infringement under the doctrine of equivalents, or induced infringement. See, e.g., [6] id. ¶¶ 55-56 . For example, it alleges that SunSpec’s publication and provision of the RSD 7 Specification to its members infringes Claims 1 and 12, and that SunSpec induced infringement 8 “by its members (and their customers and solar system installers) by issuing press releases” 9 regarding its attempt to invalidate claims in the ’321 Patent. See id. ¶¶ 55-57 . The FAC further 10 states that SunSpec members infringe the claims when they sell products certified as compliant 11 with the RSD Specification, and that customers and solar system installers infringe “by making, 12 using, offering for sale, selling, and/or importing products and systems that practice the SunSpec 13 RSD Specification in the United States.” Id. ¶ 59 . Tigo also says that it told SunSpec that 14 products that adhere to the RSD Specification need a license to the ’321 Patent and asked SunSpec 15 to inform its members of such, but that SunSpec refused to do so and denied that a license was 16 needed. Id. ¶¶ 19-20 . 17 Tigo sued SunSpec in February 2023. Dkt. No. 1. After SunSpec moved to dismiss, Tigo 18 filed the FAC, which alleges a single count of infringement. Dkt. Nos. 11, 17. SunSpec again 19 moved to dismiss in April 2023. Dkt. No. 19. 20 LEGAL STANDARD 21 Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint 22 if it fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion, the 23 plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.” Bell Atl. 24 Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible when the plaintiff 25 pleads facts that allow the court “to draw the reasonable inference that the defendant is liable for 26 the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (citation omitted). There 27 must be “more than a sheer possibility that a defendant has acted unlawfully.” Id. While courts 1 “raise a right to relief above the speculative level.” See Twombly, 550 U.S. at 555, 570 . 2 In deciding whether the plaintiff has stated a claim upon which relief can be granted, the 3 court accepts her allegations as true and draws all reasonable inferences in her favor. See Usher v. 4 City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the court is not required to 5 accept as true “allegations that are merely conclusory, unwarranted deductions of fact, or 6 unreasonable inferences.” In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008). 7 If the court dismisses the complaint, it “should grant leave to amend even if no request to 8 amend the pleading was made, unless it determines that the pleading could not possibly be cured 9 by the allegation of other facts.” Lopez v. Smith, 203 F.3d 1122, 1127 (9th Cir. 2000). In making 10 this determination, the court should consider factors such as “the presence or absence of undue 11 delay, bad faith, dilatory motive, repeated failure to cure deficiencies by previous amendments, 12 undue prejudice to the opposing party and futility of the proposed amendment.” Moore v. Kayport 13 Package Express, 885 F.2d 531 , 538 (9th Cir. 1989). 14 DISCUSSION 15 “[W]hoever without authority makes, uses, offers to sell, or sells any patented invention, 16 within the United States or imports into the United States any patented invention during the term 17 of the patent therefor, infringes the patent.” 35 U.S.C. § 271 (a). There are two types of direct 18 infringement: literal infringement and infringement under the doctrine of equivalents. See Cross 19 Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1310 (Fed. Cir. 2005). In 20 addition, “[w]hoever actively induces infringement of a patent shall be liable as an infringer.” 35 21 U.S.C. § 271 (b). 22 Although Tigo only asserts one infringement claim against SunSpec, it proffers three 23 theories of liability that SunSpec challenges in its motion: literal infringement, infringement under 24 the doctrine of equivalents, and induced infringement. See FAC ¶¶ 50-79; see also Mot. to 25 Dismiss (“MTD”) [Dkt. No. 19] 9:15-23:22. It is worth noting that Tigo takes a kitchen-sink 26 approach to its claim, alleging different acts by different actors (SunSpec, but also the laboratories, 27 SunSpec members, customers, and solar panel installers not named as defendants in this suit) 1 generally FAC. I will consider each theory of liability as I understand it to be alleged in the 2 operative complaint. 3 I. DIRECT INFRINGEMENT 4 A. Literal Infringement 5 Of the ways to directly infringe upon a patent, two are central to Tigo’s claim against 6 SunSpec: “make” and “use.” See 35 U.S.C. § 271 (a).1 The FAC alleges that SunSpec directly 7 infringes at least Claims 1 and 12 of the ’321 Patent “by making and using a system . . . to test 8 sample products provided by SunSpec’s members to ensure their compliance with the SunSpec 9 RSD Specification” that practices every limitation of the two claims. See, e.g., FAC ¶ 67. 10 1. “Use” by SunSpec 11 To “use” a system in a manner than infringes under section 271(a), “a party must put the 12 invention into service, i.e., control the system as a whole and obtain benefit from it.” Centillion 13 Data Sys., LLC v. Qwest Commcn’s Int’l, Inc., 631 F.3d 1279, 1284 (Fed. Cir. 2011). “[D]irect 14 infringement by ‘use’ of a system claim requires a party to use each and every element of a 15 claimed system” and obtain a benefit from each. Id. (citations omitted); see also Intellectual 16 Ventures I LLC v. Motorola Mobility LLC, 870 F.3d 1320, 1329 (Fed. Cir. 2017). But the party 17 need not exercise “physical or direct control over each individual element of the system.” See 18 Centillion, 631 F.3d at 1284 (cleaned up). Instead, “[i]n order to ‘put the system into service,’ the 19 end user must be using all portions of the claimed invention.” Id. 20 The arguments here are somewhat limited, as neither party employed the proper standard 21 in evaluating Tigo’s literal infringement claim. See MTD at 7:20-8:9; Oppo. at 6:19-12:11.2 [22] 1 The FAC also alleges that SunSpec infringes when members “selling products certified as [23] compliant with the SunSpec RSD Specification” and “customers and solar system installers of products that are certified as compliant” with that specification “sell and/or offer for sale solar [24] systems that practice the SunSpec RSD Specification.” See, e.g., FAC ¶ 62. But the FAC does not appear to allege that SunSpec sells these products itself, and as I explain later in this Order, it [25] does not clearly articulate how the sale of the products infringe on the systems recited in Claims 1 and 12. Nor does it sufficiently explain how SunSpec is responsible for these customers or solar [26] system installers. As a result, I focus on the apparent “use” and “make” claims in my analysis of literal infringement. [27] 1 However, the core arguments that SunSpec makes carry over to Tigo’s systems claims. According 2 || to SunSpec, Tigo has not adequately alleged direct infringement because: (1) the testing system is 3 || missing certain claim elements, primarily a solar module; and (2) Tigo has not pleaded facts “that 4 || establish a reason to attribute the testing labs’ actions to SunSpec,” including those that would 5 establish “control, an agency relationship, a joint-enterprise, or contractual relationship.” MTD at 6 || 9:15-12:8. 7 To the first point, the FAC primarily relies on two figures to show direct infringement. 8 || The first is found in Paragraph 46 and comes from the RSD Test Specification: 9 An RSD with multiple inputs shall be tested with identical supply circuits connected to its inputs. Figure 3.2 depicts the example of the test setup with a multi-module RSD with two modules [10] Rs Lpymed ars Re Ce il 50 50 Suntec 11 ia. - a a tal “Tots: +, PS |) mada CP 2 2 ce Pols “hove ss [13] Figure 3.1: Receiver test configuration in case of a single-module RSD - 14 Rs Lpymod | . Re Ce so | sD 3 15 PS Vmod ape © - “A vects AR|E tet doom □□ □□ [60] 16 Rs Lpvmod fe roe a a Z, 18 Figure 3.2: Receiver test configuration in case of a multi-module RSD 19 . . . FAC { 46 (citing FAC, Ex. 3 at 7-8). The FAC alleges that the “RSD” (the device being tested for [20] certification) is a “watchdog unit” that is “coupled between the equivalent of a solar module (the [21] components on the left drawn in black that are connected to the RSD inputs, which are described [22] in the RSD Test Specification as ‘equipment to simulate the voltage of a PV module’) and a power [23] bus,” with the power bus “configured to connect a plurality of solar modules to an inverter and a [24] transmitter (the SunSpec signal pattern generator).” Jd. It further alleges that the SunSpec signal [25] pattern generator is a central controller remote from the RSD “and the solar module or its [26] equivalent.” Id. 47. 27 . . As SunSpec notes, these test configurations do not appear to contain the solar module that [28] 1 is recited in both Claims 1 and 12. See MTD at 11:4-9; see also °?321 Patent at 11:18-36, 12:112 || 20. Instead, they depict a series of components that simulate a solar module’s power. Tigo 3 acknowledges this in its FAC, describing the components on the left side of the diagrams as “the 4 || equivalent of a solar module.” See FAC § 46. The FAC cites to the RSD Test Specification, 5 || which describes “equipment to simulate the voltage of a PV module.” Id., see also Ex. 3 at 8-9. 6 || But none of the components are actually described as or alleged to be a solar module. See id. { 46. 7 || Because “direct infringement by ‘use’ of a system claim requires a party to use each and every 8 || element of a claimed system” and use “all portions of the claimed invention,” Tigo has not 9 adequately pleaded direct infringement by SunSpec—at least, based on this test configuration— 10 || because it does not plausibly allege that each and every element of the claimed system is used. 11 See Centillion, 631 F.3d at 1284 . a 12 Tigo points to another figure in the FAC, which comes from the RSD Specification: 13 3.1 System Configuration A Rapid Shutdown System is a collection of Components and Communication Protocols that are used to fulfill rapid shutdown requirements as defined by NEC 2014 or NEC 2017. 14 F 1 ; Components of a rapid shutdown communication system are Initiator(s), Transmitter(s), © and Receiver(s). 2 15 The SunSpec Communication Signal for Rapid Shutdown Specification is designed to support rapid shutdown requirements of any PV system governed by NEC 2014, NEC 2017, A 16 or applicable UL standard(s), irrespective of system configuration. Issues that commonly affect application protocol performance, such as cross-talk from other protocols, noise, and line impedance, must be accounted for. vo G 17 Transmitter 5 (separate or 7, 18 are) Receiver providing er een \ standby signal or weeef __ Inverter — Receiver \ standby power i 7 i 19 pe seneMnaasanas ——_+ DC line | af line Electric ye We * oF ieee production and Pek gy i Transmitter a a 228. ee ep distribution i a ‘ Permission to 20 | i operate’ sigmal ' network : ‘ Signal fram 21 i ea} | 6-30 PV modules/ initiator* ' | □□ L i Feceivers in series 1 to 10 strings of PY modules/receivers in 23 parallel “All initiators defined in NEC 2017, art, 690.12 (C) ‘Initiation Device’ are permitted 24 Figure 1: Rapid Shutdown System 25 See Oppo. at 7:6-10 (citing in part FAC 4] 62); see also FAC, Ex. 2 at 11. According to the FAC, 26 || the “receiver” is the watchdog unit, and is coupled between a power bus and a solar module, the 27 latter of which is “one of the ‘6-30 PV modules’” identified in the figure. See id. Tigo argues that 28 || the “rapid shutdown system” shown in this figure includes solar modules and that SunSpec oO 1 therefore infringes the ’321 Patent in a variety of situations, including: [2] (1) “when a solar installer installs a solar system as shown” in the figure; [3] (2) “when a SunSpec member directs an installer to install a solar system as 4 shown” in the figure “or itself installs a solar system as shown”; 5 (3) “when SunSpec performs certification testing on its members’ products, either itself or by directing and controlling a SunSpec authorized test laboratory, using [6] a solar system as shown” in the figure; and [7] (4) “when SunSpec developed or tested its own standard.” [8] See Oppo. at 8:1-20. Although SunSpec addresses other figures that Tigo references in its [9] opposition, it does not address this one. See Reply at 2:22-6:13.3 [10] Tigo’s arguments do not save its direct infringement theory, at least as it relates to [11] SunSpec’s own “use” of the claimed system. Tigo does not explain how providing a drawing of a [12] rapid shutdown system, even one depicting solar panels, “uses” that system. And its theory [13] appears to be a novel; neither party has identified cases involving standard setting organizations [14] held liable for patent infringement by way of setting a standard. [15] I requested supplemental briefing from the parties, specifically “cases concerning standard16 setting entities being held liable for patent infringement.” Dkt. No. 25. The three cases that Tigo [17] proffered are distinguishable, primarily because, as Tigo admits, “the defendant was an entity that [18] followed a standard, not the entity that established the standard.” See Dkt. No. 26 (citing Fujitsu [19] Ltd. v. Netgear Inc., 620 F.3d 1321, 1327 (Fed. Cir. 2010); France Telecom, S.A. v. Marvell [20] Semiconducter, Inc., No. 12-CV-04967-WHA (NC), 2013 WL 1878912 , at *2-3 (N.D. Cal. May [21] 3, 2012); On Track Innovations Ltd. v. T-Mobile USA, Inc., 106 F. Supp. 3d 369, 378 (S.D.N.Y. [22] 2015)). That distinction is critical. True, the Federal Circuit has held that “a district court may [23] rely on an industry standard in analyzing infringement,” instructing that in such cases, claims [25] 3 These other figures from the RSD Test Specification, which Tigo argues “suggest the use of [26] solar panels for testing,” do not appear in the FAC. See Oppo. at 9:1-10:13. As a result, they cannot save Tigo’s direct infringement theory. See Barbera v. WMC Mortg. Corp., No. C-0427 3738-SBA, 2006 WL 167632 , at *2 n.4 (N.D. Cal. Jan. 19, 2006) (“It is axiomatic that the 1 should be compared to the accused product to determine infringement” and “if an accused product 2 operates in accordance with a standard, then comparing the claims to that standard is the same as 3 comparing the claims to the accused product.” Fujitsu, 620 F.3d at 1327 .4 But here there is no 4 system from SunSpec to compare the claims too, just the specifications.5 5 Centillion provides a helpful comparison. There, the Federal Circuit found that the 6 defendant did not “use” the patented system because although it made “back-end processing 7 elements” and provided software for customers to use, “it never put[] into service the personal 8 computer data processing means.” Centillion, 631 F.3d at 1286 . Notably, the court wrote that 9 “[s]upplying the software for the customer to use is not the same as using the system.” Id. The 10 same can be said for supplying a specification. The FAC does not adequately connect the 11 specification itself with SunSpec’s “use” of the system—i.e., it does not explain how, based on the 12 specification alone, SunSpec “control[s] the system and obtain[s] benefit from it.” See id. 13 Although Tigo argues in its opposition that SunSpec directly infringed Claims 1 and 12 when it 14 developed or tested this standard, or performs certification in accordance with the figure, those 15 allegations are missing from the FAC. Instead, the complaint alleges that its authorized 16 laboratories perform this testing, not SunSpec itself. See, e.g., FAC ¶ 18 (“SunSpec provides 17 testing and certification for the SunSpec RSD Specification. . . . When a SunSpec member seeks 18 to certify a product, that member pays a fee to SunSpec, and one or more of these SunSpec 19 authorized test laboratories performs the tests required by the RSD Test Specification under 20 SunSpec’s direction and control.”). [22] 4 But the use of an industry standard is not absolute. The Federal Circuit also wrote in Fujitsu that “in many instances, an industry standard does not provide the level of specificity required to [23] establish that practicing that standard would always result in infringement,” and that if “the relevant section of the standard is optional . . . standards compliance alone would not establish that [24] the accused infringer chooses to implement the optional section.” See 620 F.3d at 1327-28 . “In these instances,” the court wrote, “it is not sufficient for the patent owner to establish infringement [25] by arguing that the product admittedly practices the standard, therefore it infringes.” Id. at 1328 . [26] 5 Nor do these cases support Tigo’s theory of infringement as it relates to SunSpec’s members, their customers, or solar system installers. As I explain later in this Order, Tigo has not explained [27] how the make, use, or sale of any products by SunSpec members or their customers infringes on 1 This brings me to SunSpec’s second argument: that Tigo has not pleaded “any facts that 2 establish a reason to attribute the testing labs’ actions to SunSpec.” MTD at 11:24-26. According 3 to SunSpec, “Tigo merely pleads the conclusion that SunSpec directs or controls these separate 4 entities, which would normally be presumed to be independent.” Id. at 11:26-28 (citing FAC ¶¶ 5 18, 22, 45-49, 54). Tigo responds that SunSpec is liable “because it directs and controls [the labs’] 6 actions in performing the testing required by the SunSpec test specification.” Oppo. at 11:16-17. 7 Both parties base their argument on cases involving method claims rather than systems 8 claims. See MTD at 11:22-12:8 (citing Mankes v. Vivid Seats Ltd., 822 F.3d 1302 (Fed. Cir. 9 2016)); Oppo. at 11:16-12:11 (citing Mankes and Akamai Techs., Inc. v. Limelight Networks, Inc., [10] 797 F.3d 1020 (Fed. Cir. 2015)). Again, Centillion articulates the relevant consideration: The 11 “only way” that Tigo “can establish ‘use’” by SunSpec is if SunSpec is vicariously liable for the 12 actions of the laboratories so that “use” by the labs may be attributed to SunSpec. See 631 F.3d at 13 1286. Centillion further explains that a defendant may be vicariously liable for the actions of a 14 third-party if it “directs” the third party to perform or the third party acts as its agent. Id. at 1287 . 15 The FAC plausibly alleges this. It alleges that SunSpec “establishes relationships” with its 16 authorized laboratories, and that when a SunSpec member seeks product certification, “one or 17 more” of these labs “performs the tests required by the RSD Test Specification under SunSpec’s 18 direction and control.” FAC ¶ 18. Critically, the FAC alleges that “SunSpec practices the 19 SunSpec RSD Specification”—and the figure that appears to show a solar module—“when 20 directing and controlling the testing of its members’ products . . . to certify them as compliant with 21 the SunSpec RSD Specification.” See id. ¶ 62. Accepting these allegations as true, it is plausible 22 that when one of the authorized laboratories tests a rapid shutdown system to determine whether it 23 complies with the RSD Specification, it “uses” the claimed system. See id. ¶¶ 62-68. And 24 because these labs allegedly test the products under SunSpec’s direction and control, it is plausible 25 that SunSpec is vicariously liable. 26 SunSpec may prove otherwise as this case progresses. Its primary argument against the 27 “use” of the claimed system is that the test specification depicted in the FAC did not depict a solar 1 figure from the RSD Specification in its opposition. And of course, discovery may disprove these 2 allegations, along with SunSpec’s potential vicarious liability. But without further argument to the 3 contrary, I find that Tigo has adequately alleged literal infringement by SunSpec by way of the 4 testing performed by the labs in accordance with the RSD Specification. 5 2. “Make” by SunSpec 6 To “make” a claimed system under section 271(a), a defendant must “combine all of the 7 claim elements.” Centillion, 631 F.3d at 1288 . Neither party references this standard. 8 Nor did SunSpec separately address Tigo’s allegations that SunSpec “made” the claimed 9 system for the purposes of infringement until its reply. See Reply at 8:5-15. It then argues that it 10 does not “make” “any part of an accused system, and independent third parties must supply all 11 hardware and assemble any systems used,” meaning it does not literally infringe on the system by 12 “making” it. See id. 13 The problem is that SunSpec did not make this argument earlier. “Raising the issue for the 14 first time in a reply brief does not suffice; reply briefs reply to arguments made in the response 15 brief—they do not provide the moving party with a new opportunity to present yet another issue 16 for the court’s consideration.” Novosteel SA v. U.S., Bethlehem Steel Corp., 284 F.3d 1261 , 1274 17 (Fed. Cir. 2002) (emphasis in original). By presenting this argument in the final papers on this 18 motion, SunSpec denied Tigo the chance to adequately respond. 19 The allegations about SunSpec laboratories described above plausibly show that the labs 20 “combine[d] all of the claim elements” in the claimed system when testing products in accordance 21 with the RSD Specification. See Centillion, 631 F.3d at 1288 ; see also FAC ¶ 62. SunSpec’s 22 delayed arguments to the contrary focus on whether a customer completes a system by providing 23 hardware or installing software; it does not specifically address the laboratories. See Reply at 8:524 15. Without further argument from SunSpec, Tigo’s claim may also proceed on the theory that 25 SunSpec literally infringed via the laboratories’ “use” of the claimed systems. 26 B. Infringement Under the Doctrine of Equivalents 27 Under the doctrine of equivalents, “a product or process that does not literally infringe 1 ‘equivalence’ between the elements of the accused product or process and the claimed elements of 2 the patented invention.” Nalco Co. v. Chem-Mod, LLC, 883 F.3d 1337, 1354 (Fed. Cir. 2018) 3 (citation omitted). “A finding of infringement under the doctrine of equivalents requires a 4 showing that the difference between the claimed invention and the accused product or method was 5 insubstantial or that the accused product or method performs the substantially same function in 6 substantially the same way with substantially the same result as each claim limitation of the 7 patented product or method.” AquaTex Indus., Inc. v. Techniche Sols., 479 F.3d 1320, 1326 (Fed. 8 Cir. 2007). “An analysis of the role by each element in the context of the specific patent claim 9 will thus inform the inquiry as to whether a substitute element matches the function, way, and 10 result of the claimed element.” Warner-Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 11 17, 40 (1997). 12 The parties dispute the level of detail that is required for Tigo to plead infringement under 13 the doctrine of equivalents. SunSpec contends that under Iqbal and Twombly, Tigo must plead 14 plausible facts in support. Reply at 10:17-19. According to Tigo, when literal infringement is 15 plausibly alleged, “even a general allegation under the doctrine of equivalents is sufficient.” 16 Oppo. at 10:25-11:2. Neither party provides a Federal Circuit case that expressly articulates what 17 is required for this type of claim and the case law that I have found is conflicting. See Disc 18 Disease Sols. Inc. v. VGH Sols., Inc., 888 F.3d 1256, 1260 (Fed. Cir. 2018) (finding that the 19 plaintiff had plausibly alleged infringement under Iqbal/Twombly in a case involving “simple 20 technology” because the complaint “specifically identified the three accused products—by name 21 and by attaching photos of the product packaging as exhibits—and alleged that the accused 22 products meet ‘each and every element of at least one claim [of the asserted patents] either literally 23 or equivalently.”) (emphasis added); but see Nalco, 883 F.3d at 1354 (finding that the plaintiff 24 adequately stated a doctrine of equivalents claim under Twombly and Iqbal because it “explicitly 25 incorporated detailed infringement contentions explaining its doctrine of equivalents claim”). 26 There is consensus among district courts within this Circuit, however, that if a plaintiff 27 plausibly alleges literal infringement, general allegations of infringement under the doctrine of 1 16894518, at *4 (C.D. Cal. Sept. 19, 2022) (finding that because the plaintiff had plausibly alleged 2 literal infringement, a general allegation of infringement under the doctrine of equivalents was 3 sufficient); Neutrik AG v. ADJ Prods., LLC, No. CV-19-09937, 2020 WL 6128066 , at *4 (C.D. 4 Cal. May 6, 2020) (same); ALD Social, LLC v. Verkada, Inc., No. 23-CV-00049-JSC, --- F. Supp. 5 3d. ----, 2023 WL 1802418 , at *6 (N.D. Cal. Feb. 7, 2023) (“[B]ecause plaintiff’s literal 6 infringement allegation is implausible, a conclusory reference to the doctrine of equivalents is 7 insufficient to make the direct infringement claim plausible.”). 8 I will allow Tigo’s claim to proceed under the doctrine of equivalents but on more limited 9 grounds than what is alleged in the FAC. As I have explained, Tigo has plausibly alleged direct 10 infringement by SunSpec when it directs and controls its affiliated laboratories to test products in 11 accordance with the RSD Specification. This is enough to support the more general allegations in 12 its FAC that SunSpec infringed under the doctrine of equivalents when its affiliated laboratories 13 tested the products in accordance with that specification. See FAC ¶¶ 22, 45. That is all that is 14 needed for now, at least until (and unless) SunSpec provides clear authority to the contrary. 15 The FAC also makes blanket allegations that SunSpec members, customers, and solar 16 system installers infringe Claims 1 and 12 under the doctrine of equivalents when products that 17 adhere to the RSD Specification “are installed and used as they are designed, intended, and 18 certified to be installed and used.” See FAC ¶ 21. It also alleges that these members, customers, 19 and installers “make, use, sell, offer to sell, and import products that adhere to the SunSpec RSD 20 Specification despite SunSpec’s knowledge that doing so infringes at least Claims 1 and 12 of 21 Tigo’s ’321 Patent, literally or under the doctrine of equivalents.” Id. ¶ 55 . Because Tigo has not 22 plausibly alleged literal infringement based on these acts, these allegations are too conclusory to 23 support a theory of infringement under the doctrine of equivalents. 24 II. INDUCED INFRINGEMENT 25 A party is liable for induced infringement if it “took certain affirmative acts to bring about 26 the commission by others of acts of infringement and had knowledge that the induced acts 27 constitute patent infringement.” TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1286 (Fed. Cir. 2020) 1 state of mind, whether actual knowledge or the subjective beliefs (coupled with action to avoid 2 learning more) that characterizes willful blindness.” Id. (citation omitted). “[W]here there has 3 been no direct infringement, there can be no inducement of infringement under section 271(b).” 4 Limelight Networks, Inc. v. Akami Techs., Inc., 572 U.S. 915, 922 (2014). 5 SunSpec argues that Tigo’s induced infringement theory fails because the FAC does not 6 allege: (1) any predicate direct infringement; (2) that SunSpec “engaged in any activities that 7 encourage infringement”; (3) that SunSpec specifically intended to cause its members, their 8 installers or customers, or the laboratories to infringe the ’321 patent; and (4) that SunSpec knew 9 of any infringement. MTD at 13:15-23:22. 10 The first argument narrows the scope of this theory of liability. As I have explained, the 11 FAC plausibly alleges that the SunSpec-affiliated laboratories used and made the claimed system 12 when it tested products in accordance with the RSD Specification. As pleaded, this is an act of 13 direct infringement that supports Tigo’s theory of induced infringement by SunSpec. 14 But Tigo does not limit its induced infringement theory to the laboratories. The FAC also 15 alleges that SunSpec induced infringement by its members, their customers, and solar installers “to 16 use the SunSpec RSD Specification, and to make, use, and sell products adhering to the SunSpec 17 RSD Specification.” See FAC ¶¶ 55-56. But it does not allege with any specificity how the 18 customers or solar installers directly infringe, beyond repeating the language found within section 19 271(a). See 35 U.S.C. § 271 (a). As pleaded, the allegations of direct infringement by customers 20 or solar installers are too conclusory to support a claim of induced infringement or otherwise 21 proceed. See MTD at 17:22-28. 22 The allegations about SunSpec’s members, though more detailed, still fall short. SunSpec 23 argues in its motion that its members “deal in individual products” and do not “make, use, sell, 24 offer for sale, or import systems” like those recited in the asserted claims. See, e.g., id. at 2:13-20 25 (emphasis in original). That is a valid point. The FAC alleges that one of SunSpec’s members, 26 SMA Solar Technology AG (“SMA”), makes a “JMS-F rapid shutdown device” (“a module-level 27 rapid shutdown unit that is attached to individual photovoltaic panels”) and inverters (that are 1 including the JMS-F rapid shutdown device”). See FAC ¶¶ 12, 40-41. But the FAC does not 2 explain how the creation, use, or sale of these products amounts to an infringement of the systems 3 claims at issue. Indeed, the FAC describes these as “products” and compares them to specific 4 elements of the asserted claims, rather than describing them as an infringing system. See, e.g., id. 5 ¶¶ 42 (alleging that “the SMA inverters provide a watchdog signal . . . to a rapid shutdown device, 6 e.g., the JMS-F shutdown device), 67 (describing “SMA’s products”); 69 (describing the JMS-F 7 device as “part of a system in which it is a watchdog unit” and comparing the SMA inverter to the 8 claimed inverter). 9 Tigo may be able to add allegations to the complaint that plausibly show that SunSpec’s 10 members, customers, or solar installers directly infringed upon its systems claims to support its 11 theory of induced infringement. To the extent that the infringement claim depends on this theory 12 as it relates to these third-party actors, it is too conclusory to proceed. 13 Next, SunSpec argues that the FAC does not plausibly allege that it “engaged in any 14 activities that encourage infringement.” MTD at 18:10-12. I disagree. The FAC alleges that 15 SunSpec induces infringement in part by instructing the laboratories “to perform tests under the 16 RSD Test Specification, which involve making and using a system practicing at least Claims 1 and 17 12 of the ’321 Patent” and that the tests performed by the labs are “required by the RSD Test 18 Specification” and performed “under SunSpec’s direction and control.” See, e.g., FAC ¶¶ 18, 54. 19 These allegations plausibly show that SunSpec “took certain affirmative acts to bring about the 20 commission by others of acts of infringement” by directing the laboratories to test products in 21 accordance with the RSD Specification. See TecSec, 978 F.3d at 1286 . 22 SunSpec’s remaining arguments against induced infringement are that Tigo has not 23 sufficiently alleged that SunSpec specifically intended for the laboratories to infringe the ’321 24 Patent or that SunSpec knew of any infringement. MTD at 20:10-23:22. “For an allegation of 25 induced infringement to survive a motion to dismiss, a complaint must plead facts plausibly 26 showing that the accused infringer specifically intended another party to infringe the patent and 27 knew that the other party’s acts constituted infringement. Lifetime Indus., Inc. v. Trim-Lok, Inc., 1 To begin, the FAC plausibly alleges that SunSpec knew about the ’321 Patent and specific 2 claims at issue. Paragraph 23 alleges that in October 2017, Tigo “formally notified SunSpec” that 3 it owned the ’321 Patent and “that at least Claims 1 and 12 of the ’321 Patent are necessary to the 4 SunSpec RSD Specification.” FAC ¶ 23. The FAC further alleges that in July 2021, SunSpec 5 sought inter partes review of the ’321 Patent by the Patent Trial and Appeal Board (“PTAB”) “in 6 an effort to invalidate claims of the ’321 Patent that are necessary to the RSD Specification,” and 7 that after the PTAB issued its final written decision rejecting the invalidity arguments, SunSpec 8 issued a press release acknowledging that the PTAB “ultimately declined to cancel certain other 9 challenged claims” of the patent. See id. ¶¶ 30-34. 10 According to Tigo, “it is fair to infer” from these allegations that “SunSpec knows that its 11 rapid-shutdown standard infringes Tigo’s ’321 Patent” and that it is “at least plausible that 12 SunSpec specifically intends others to use the system described” in that standard. Oppo. at 13:4-5, 13 17:11-18. SunSpec responds that the FAC makes only “generic allegations that [it] had 14 knowledge and intended to cause” the labs to use the RSD Specification, and relies on “SunSpec’s 15 knowledge of Tigo’s unproven claims and assertions in this case,” which “do[] not mean that 16 SunSpec knows that practicing the specification infringes the ’321 Patent.” Oppo. at 13:10-15:9. 17 Tigo has the better argument. The FAC alleges that SunSpec has known since at least 18 October 2017 that “products adhering to the SunSpec RSD Specification infringe at least Claims 1 19 and 12 of the ’321 Patent,” and that despite this, SunSpec has directed the authorized laboratories 20 to test the products for compliance with that specification. See FAC ¶ 54. The FAC further 21 alleges that Tigo told SunSpec that Claims 1 and 12 were “necessary to the SunSpec RSD 22 Specification” and notified it of the purported infringement. Id. ¶¶ 23, 27, 29. SunSpec then 23 challenged the validity of the ’321 Patent with the PTAB. Id. ¶ 30. SunSpec tries to dismiss this 24 as indicia of Tigo’s belief about infringement rather than its own, but “[a]n accused infringer can, 25 of course, attempt to prove that the patent in suit is invalid; if the patent is indeed invalid, and 26 shown to be so under proper procedures, there is no liability.” See Commil USA, LLC v. Cisco 27 Sys., Inc., 575 U.S. 632, 644 (2015) (citation omitted). Taken together, these facts plausibly allege 1 for the labs to infringe upon those claims by testing products in accordance with the specification. 2 || See Lifetime Indus., 869 F.3d at 1379. As with the other allegations, SunSpec may be able to 3 disprove these as the case proceeds. For now, Tigo has plausibly alleged induced infringement— 4 at least via the laboratories. 5 To sum up: Tigo’s infringement claim may proceed under each of the theories of liability 6 || identified above: literal infringement, infringement under the doctrine of equivalents, and induced 7 infringement. But those theories are only adequately pleaded as it relates to the theory that 8 || SunSpec-affiliated laboratories’ use or make the claimed systems. To the extent that the claim 9 || relies on other alleged acts by SunSpec members, customers, or solar panel installers, they have 10 || not been sufficiently alleged. I will, however, grant Tigo leave to amend its claim, as additional 11 allegations may plausibly support its additional theories of liability. 12 CONCLUSION 5 13 The motion is DENIED in part and GRANTED in part, with leave to amend as described 14 above. Any amended complaint is due within 20 days of the issuance of this Order. 3 15 IT IS SO ORDERED. a 16 Dated: June 28, 2023 . 8 □□□ H. Orrick United States District Judge