Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017

Hanwha Solutions Corporation v REC Solar Pte Ltd [2023] FCA 1017

All asserted claims depended on claim 9, which required a first dielectric layer comprising aluminium oxide to be directly 'on a surface of the silicon substrate'. In each accused REC Solar product, a silicon oxide layer was present between the silicon substrate and the aluminium oxide layer. On the proper construction of the claim, as supported by the specification, common general knowledge, and expert evidence, this requirement was not met. Therefore, none of the asserted claims were infringed. Additionally, claims 9, 12, 16, and 21 were anticipated by Nakano and therefore invalid for lack of novelty.

Parties
First Applicant: Hanwha Solutions Corporation (Registration No. 10111-030935); Second Applicant: Hanwha Q CELLS Australia Pty Ltd ABN 84 141 108 590; First Respondent / First Cross Claimant: REC Solar Pte Ltd; Second Respondent / Second Cross Claimant: Sol Distribution Pty Ltd ABN 53 146 905 286; Third Respondent / Third Cross Claimant: Baywa r.e. Solar Systems Pty Ltd ACN 614 035 620; First Cross Respondent: Hanwha Global Asset Corporation (Registration No. 110111-1725930); Second Cross Respondent: Hanwha Solutions Corporation (Registration No. 110111-0360935)
Jurisdiction
Australia
Judgment Date
29 August 2023
Procedural Posture
Patent Infringement and Cross Claim for Invalidity, Consumer Law and Unjustified Threats / Final Judgment After Trial
Outcome
REC Solar not liable for infringement; asserted claims not infringed. Claims 9, 12, 16, and 21 invalid for lack of novelty. Injunctive relief and ACL claims dismissed. Unjustified threats claim by REC Solar succeeds as to pre-action letters of demand. Orders for parties to confer on draft final orders and timetable.
Legal Topics
Patent Infringement, Patent Validity, Claim Construction, Inventive Step, Novelty, Utility, Fair Basis, Clarity of Claims, Australian Consumer Law, Unjustified Threats
Intellectual Property Patent Law Consumer Law Patent Infringement Patent Validity Claim Construction Inventive Step Novelty +5 more

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Parties

Hanwha Solutions Corporation (Registration No. 10111-030935)

First Applicant

Hanwha Q CELLS Australia Pty Ltd ABN 84 141 108 590

Second Applicant

REC Solar Pte Ltd

First Respondent / First Cross Claimant

Sol Distribution Pty Ltd ABN 53 146 905 286

Second Respondent / Second Cross Claimant

Baywa r.e. Solar Systems Pty Ltd ACN 614 035 620

Third Respondent / Third Cross Claimant

Hanwha Global Asset Corporation (Registration No. 110111-1725930)

First Cross Respondent

Hanwha Solutions Corporation (Registration No. 110111-0360935)

Second Cross Respondent

Procedural Posture

Patent Infringement and Cross Claim for Invalidity, Consumer Law and Unjustified Threats / Final Judgment After Trial

Legal Issues

  1. 1 Whether REC Solar infringed asserted claims 12-14 and 16-21 of AU patent No 2008323025
  2. 2 Whether the asserted claims are invalid for lack of novelty, inventive step, fair basis, utility, or clarity
  3. 3 Whether Hanwha made unjustified threats under s 128 Patents Act 1990 (Cth)

Ratio Decidendi

All asserted claims depended on claim 9, which required a first dielectric layer comprising aluminium oxide to be directly 'on a surface of the silicon substrate'. In each accused REC Solar product, a silicon oxide layer was present between the silicon substrate and the aluminium oxide layer. On the proper construction of the claim, as supported by the specification, common general knowledge, and expert evidence, this requirement was not met. Therefore, none of the asserted claims were infringed. Additionally, claims 9, 12, 16, and 21 were anticipated by Nakano and therefore invalid for lack of novelty.

Court Disposition

REC Solar not liable for infringement; asserted claims not infringed. Claims 9, 12, 16, and 21 invalid for lack of novelty. Injunctive relief and ACL claims dismissed. Unjustified threats claim by REC Solar succeeds as to pre-action letters of demand. Orders for parties to confer on draft final orders and timetable.

Orders

  • The parties confer and supply to the chambers of Justice Burley by 4pm on 19 September 2023 draft short minutes of order giving effect to these reasons and a proposed timetable for further steps to be taken in the proceedings.
  • Insofar as the parties are unable to agree to the terms of draft short minutes of order, areas of disagreement to be set out in mark-up.