CyboEnergy, Inc. v. Hoymiles Power Electronics USA, Inc.

I'll research this case thoroughly using web search before drafting the overview.

Let me dig into the docket history, the IPR, and the defendant's corporate profile.

Case Overview — CyboEnergy, Inc. v. Hoymiles Power Electronics USA, Inc., No. 2:23-cv-00311-JRG (E.D. Tex.)

The parties. CyboEnergy, Inc. is a Delaware corporation with its principal place of business in Sacramento County, California (Rancho Cordova), and is an affiliate/subsidiary of CyboSoft, General Cybernation Group Inc. (complaint ¶ 1; cyboenergy.com). It is an operating manufacturer, not a classic shell patent-holder: it developed the "CyboInverter," marketed as the world's first solar "mini-inverter" sitting between string/central inverters and microinverters, sells UL 1741-certified, "Made in U.S.A." hardware, and holds a portfolio of roughly 34 U.S. and international patents rooted in its MFA control technology. Its CEO/founder is Dr. George Shu-Xing Cheng, a named inventor on the asserted patents. Notably, despite being a product company, CyboEnergy is described by Unified Patents as "an NPE" in its prior-art bounty program (PATROLL) — a characterization that sits awkwardly with its manufacturing footprint but reflects its serial assertion campaign. Defendant Hoymiles Power Electronics USA, Inc. is the U.S. subsidiary of Hangzhou-based Hoymiles Power Electronics Inc., founded in 2012 by Dr. Yang Bo, listed on Shanghai's STAR Market (688032) since December 2021, and generally ranked the world's #2 microinverter supplier by shipments (S&P Global), with ~190 countries of installed base and a stated 17.4% global microinverter shipment share in 2025 (hoymiles.com; S&P-based summary). The complaint alleges Hoymiles has a regular and established place of business at 3001 Technology Drive, Suite 100, Plano, Texas, which underpins venue. Plaintiff's counsel is Ramey LLP (Houston), per the firm's own press release; I could not confirm defense counsel of record from the sources reviewed.

The technology and asserted patents. CyboEnergy sued on June 27, 2023, accusing Hoymiles' power inverter product lines — the court's opinion describes "several individual power invert[er] product lines" — of infringement (Dkt. 25). Two patents are asserted. U.S. Patent No. 8,786,133, "Smart and Scalable Power Inverters" (issued July 22, 2014), claims 1–24 asserted; it covers a solar power inverter system in which a controller uses sensor input to decide whether to run the inverter in a "smart" mode (maximizing output across all lighting conditions) or a "scalable" mode (multi-inverter configurations optimized for low light). The claims litigated at the pleading stage were apparatus Claim 15 (a multi-inverter system) and method Claim 19. U.S. Patent No. 9,331,489, "Maximizing Power Production at Low Sunlight by Solar Power Mini-Inverters" (issued May 3, 2016), claims 1–16 asserted; it covers a controller that determines whether multiple solar mini-inverters operate in a combined mode or independently to maximize harvest under low-irradiance conditions such as sunrise, sunset, cloud cover, and partial shading (Ramey LLP; complaint ¶¶ 6, 13). Both are asserted against per-panel MPPT/multi-input microinverter architecture — the core of the modern MLPE market dominated by Enphase and Hoymiles.

Procedural posture, venue, and significance. The case is in the Marshall Division of the Eastern District of Texas before Chief Judge Rodney Gilstrap (the "JRG" suffix), a venue long favored by patent plaintiffs for speed and plaintiff-friendly procedures; Hoymiles' Plano, Texas presence makes venue defensible under TC Heartland. Hoymiles moved to dismiss under Rule 12(b)(6) (Dkt. 10, Aug. 21, 2023), and on March 20, 2024, Judge Gilstrap issued a split ruling at 2024 WL 1219725 (Dkt. 25): he granted dismissal (without prejudice, 14 days' leave to amend) of direct infringement of the '133 patent (Claims 15 and 19) and of pre-suit indirect and willful infringement for both patents, because CyboEnergy failed to allege that Hoymiles itself — rather than end users following manuals — performed the claimed steps, and failed to plead pre-suit knowledge; he denied the motion "in all other respects," leaving the '489 indirect-infringement theories (and post-suit liability theories) intact. The court expressly relied on a parallel W.D. Tex. ruling, CyboEnergy v. Altenergy Power System USA, No. WA-22-CV-1136-KC, 2023 WL 5968000 (Sept. 13, 2023), which dismissed '133 direct-infringement claims — a fact Defendants surfaced via a notice of supplemental authority (Dkt. 15). Critically, Hoymiles filed IPR2024-01106 on June 27, 2024 — exactly the § 315(b) one-year bar date — challenging Claims 15–24 of the '133 patent. Before institution, the parties filed a "License and Settlement Agreement" and a joint motion to terminate (Oct. 23, 2024), and the Board (Easthom, Ullagaddi, Cass) terminated the IPR on Oct. 28, 2024 (Termination Decision). That settlement strongly implies the district court action resolved by license in late 2024, but I could not confirm a district court dismissal/settlement order from the sources reviewed, so the metadata's "status not confirmed" flag should be treated as accurate. The case is notable on three fronts: (1) it is part of a sustained CyboEnergy assertion campaign across the microinverter/MLPE industry (Sensata, Northern Electric Power, Aptos Solar, Altenergy, Duracell, Yotta Energy, Deye ESS); (2) it shows the IPR-as-settlement-leverage pattern, where a deadline-driven petition is filed and then terminated pre-institution, leaving the patent's validity unadjudicated; and (3) it remains a live target — Unified Patents opened a new PATROLL prior-art contest on Claim 14 of the '489 patent in September–October 2026, signaling that the campaign and the patents' validity are still contested industry-wide.

Sourcing caveats: Party identities, patent titles/dates, claim numbers, the March 20, 2024 ruling, and the IPR termination are well documented. I could not verify specific accused Hoymiles model numbers (e.g., HMS/HM-series), defense counsel of record, or the exact district court disposition after October 2024; those points should be confirmed against PACER before being relied upon.

I'll research this case thoroughly using web searches.

CyboEnergy v. Hoymiles — Chronology of Key Legal Developments

Note on status: The case metadata you provided ("active; status not confirmed") appears to be stale. Although I could not retrieve the district court's later docket entries directly (CourtListener/Justia coverage for 2:23-cv-00311 stops at Dkt. 25), the PTAB record in the parallel IPR contains an unambiguous representation by both parties that they settled the district court litigation in late October 2024. I flag below what is confirmed versus inferred.

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1. Filing and initial pleadings

• Patents asserted: U.S. 8,786,133 ("Smart and Scalable Power Inverters," issued 2014-07-22) and U.S. 9,331,489 ("Maximizing Power Production at Low Sunlight by Solar Power Mini-Inverters").
• Accused products: Hoymiles power inverters/mini-inverters; claim charts attached as Exs. A–B.
• Theories/relief: direct infringement of both patents (claims 1–24 of the '133 at least), induced and contributory infringement, willful infringement with treble damages, exceptional-case declaration under § 285, damages/ongoing royalty, and a permanent injunction. (Complaint PDF; Ramey LLP announcement)

[Sourcing gap] I found no separately reported answer or counterclaims by Hoymiles; the Rule 12(b)(6) motion (below) suggests Hoymiles moved to dismiss rather than answer, and any counterclaims (e.g., declaratory judgment of invalidity/non-infringement) are not confirmed in the sources I could retrieve.

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2. Pre-trial motions of substance

2023-08-21 — Hoymiles' motion to dismiss (Dkt. 10), Rule 12(b)(6), three grounds:

1. Failure to plead direct infringement of the '133 patent (system claim 15 and method claim 19);
2. Failure to plead pre-suit induced and contributory infringement of both patents;
3. Failure to plead pre-suit willfulness.

• 2023-09-05 — Plaintiff's response (Dkt. 11). 2023-09-12 — Defendant's reply (Dkt. 12). No sur-reply.
• 2023-10-06 — Dkt. 15, Notice of Relevant Determination from Related Proceedings: Hoymiles alerted Judge Gilstrap to CyboEnergy, Inc. v. Altenergy Power System USA, Inc., No. WA-22-cv-1136-KC, 2023 WL 5968000 (W.D. Tex. Sept. 13, 2023), in which the W.D. Tex. court had already dismissed CyboEnergy's '133 direct-infringement claim on a materially identical pleading. This is a strategically significant early development: the W.D. Tex. ruling materially shaped the E.D. Tex. analysis.

2024-03-20 — Dkt. 25, Memorandum Opinion and Order, 2024 WL 1219725 (E.D. Tex. Mar. 20, 2024) (Gilstrap, J.):

• GRANTED as to: (a) direct infringement of the '133 patent; (b) pre-suit indirect infringement of both asserted patents; (c) pre-suit willfulness. Those theories were dismissed without prejudice, with 14 days' leave to amend; failure to amend would be a substantive waiver. (Opinion PDF; Justia)
• DENIED in all other respects. Surviving: CyboEnergy's direct-infringement claim on the '489 patent (never targeted by the motion), post-suit indirect infringement of both patents (knowledge supplied by the complaint itself), and post-suit willfulness.
• Reasoning highlights:
  • System claim 15 requires a plurality of daisy-chained inverters; under Rotec/Synchronoss, one cannot infringe by making/selling "less than a complete invention," and CyboEnergy accused only individual inverters, not an assembled multi-inverter system.
  • Method claim 19 steps were allegedly performed by end users following Hoymiles' manuals, not by Hoymiles; Hoymiles also argued it could not practice the steps because Texas law requires an electrical contractor's license (Tex. Occ. Code § 1305.151).
  • Pre-suit knowledge of the patents was not plausibly pleaded, defeating both pre-suit indirect infringement and pre-suit willfulness.
• Doctrinal significance: This order has been cited by other E.D. Tex. litigants as pleading-stage precedent — e.g., for dismissing implausible willfulness allegations and pre-suit indirect-infringement claims where no pre-suit knowledge is pleaded (see briefs citing CyboEnergy, 2024 WL 1219725, at *3–7, in later E.D. Tex. cases).

[Sourcing gap] I could not confirm whether CyboEnergy actually filed the amended complaint within the 14-day window (~2024-04-03) or whether Hoymiles answered it. No motion to transfer, motion to stay pending IPR, or summary-judgment motion surfaced in any source I retrieved; any such filing is unconfirmed, and realistically a stay motion would have had a very short window given the timeline below.

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3. Claim construction (Markman)

No Markman proceeding is confirmed. The case terminated roughly seven months after the pleading order, before any claim-construction hearing/opinion appears in the record. The only claim-construction-adjacent skirmish was CyboEnergy's argument, in opposing dismissal, about the construction of "DC power source" — which the court rejected as "miss[ing] the point."

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4. Discovery milestones

[Sourcing gap] I found no docketed discovery orders, discovery-dispute motions, or ESOL/source-code events. On the available record, discovery was underway in 2024 and mooted by the settlement before any trial-stage milestone.

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5. Trial events, verdict, post-trial motions

None. No trial date, verdict, JMOL/new-trial motion, or fee motion under § 285 is confirmed. The case did not reach trial.

2024-06-27 — IPR2024-01106 filed (one-year anniversary of the complaint): Hoymiles USA, Inc. (and, per Patexia, co-petitioner(s) — listed as "Hoymiles USA, Inc. et al.") petitioned for inter partes review of claims 15–24 of U.S. 8,786,133 — i.e., precisely the system/method claims CyboEnergy had accused. Filing on the exact § 315(b) one-year anniversary bar suggests the petition was filed at the statutory deadline.

• Petitioner counsel: K&L Gates LLP (Darlene Ghavimi-Alagha, Matthew Blair).
• Patent Owner counsel: DLA Piper LLP (Gianni Minutoli, Larissa Bifano, Stefan Greenewald) — CyboEnergy used different counsel for the PTAB proceeding than for the district court case.
• Panel: APJs Karl D. Easthom, Monica S. Ullagaddi, Russell E. Cass.
• 2024-07-16 — Paper 3, Notice of filing date accorded. 2024-10-17 — Paper 7, Order Conduct of the Proceeding (Board authorization to file termination papers). No institution decision — the petition was never instituted. (PTAB proceeding summary; Patexia)

Parallel PTAB status:

• IPR2024-01106 is the only PTAB proceeding I could confirm on either asserted patent. It challenged only the '133 patent; no IPR/PGR on the '489 patent is confirmed.
• Note that the '489 patent is subject to active third-party validity pressure elsewhere: Unified Patents' Patroll program has posted a $2,000 prior-art bounty on claim 14 of US 9,331,489, describing the patent as asserted against Sensata Technologies, Northern Electric Power Technology, Aptos Solar Tech, Altenergy Power Systems, Hoymiles, Duracell, and Yotta Energy. This is a signal that the patent remains in active assertion against other defendants even after the Hoymiles case resolved.

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6. Settlement and final disposition

• 2024-10-23 — In IPR2024-01106, the parties filed (after Board authorization) a Joint Motion to Terminate Proceeding (Paper 8) and a Joint Motion to Treat Settlement Agreement as Business Confidential Information (Paper 9), accompanied by a confidential "License and Settlement Agreement" (Ex. 1011). The motion represented that the parties "have settled their dispute regarding the '133 Patent, including this proceeding and Patent Owner's assertion of the '133 Patent in the related district court litigation against Petitioner."
• 2024-10-28 — Termination Decision, Paper 10 (37 C.F.R. § 42.74; 35 U.S.C. § 317): The Board granted the joint motion, dismissed the petition, and terminated IPR2024-01106; the settlement agreement was sealed as "Parties and Board Only." The decision expressly states it "does not constitute a final written decision pursuant to 35 U.S.C. § 318(a)." (Termination Decision PDF)
• Inferred district court disposition: Because the settlement expressly covered the district court assertion of the '133 patent, the E.D. Tex. case was almost certainly resolved by stipulated dismissal (likely with prejudice) and/or a license agreement around late October 2024. [Sourcing gap] I could not retrieve the district court dismissal order or the Dkt. entry number confirming it, and it is unclear from the public record whether the '489 patent assertion was also resolved by the same agreement (the IPR papers reference only the '133 patent). Treat the exact dismissal date and scope as unverified.
• Administrative tail (2026): 2026-01-20 — Petitioner's Request for Refund of Post-Institution Fees (Paper 11); 2026-01-27 — Notice refund approved (Paper 12). This is purely ministerial PTAB housekeeping 15 months after termination and has no substantive effect. (Docket Alarm lists these entries.)
• Appeal: No Federal Circuit appeal is confirmed; none would be expected absent a final judgment or FWD.

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7. Present posture (as of 2026-09-27)

• No merits adjudication of validity or infringement occurred. No Markman ruling, no trial, no verdict, no JMOL/fee award, and no appellate decision.
• The '133 patent's claims 15–24 were never instituted on and never invalidated in IPR2024-01106 — they remain presumptively valid, with the IPR dismissed pre-institution by settlement.
• The CyboEnergy v. Hoymiles docket is presumed closed/dismissed pursuant to the October 2024 global settlement, though the case summaries still describe it as "active." The case's durable legal significance is procedural: the March 20, 2024 opinion (2024 WL 1219725) has become a frequently cited E.D. Tex. authority on (i) the requirement that a system-claim plaintiff accuse a complete assembled system rather than individual components, and (ii) the necessity of pleading pre-suit knowledge for indirect infringement and willfulness.
• Related CyboEnergy campaign: the '133 and '489 patents have been asserted against a dozen-plus defendants (Altenergy — W.D. Tex. 2022, dismissed as to '133 direct infringement; Sensata; Northern Electric Power; Aptos Solar; Duracell; Yotta Energy; and others), making this case one data point in a broader licensing/enforcement program rather than an isolated dispute.

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Caveats on sourcing

• District court docket entries after Dkt. 25 (2024-03-20) were not retrievable in this research pass; the amended-complaint filing, any answer/counterclaims, any stay motion, and the exact stipulation of dismissal are unconfirmed.
• The exact scope of the confidential License and Settlement Agreement (whether it covers the '489 patent, and whether any royalty/fields-of-use terms attach) is sealed "Parties and Board Only" and is not publicly available.
• Whether a companion IPR petition targeted the '489 patent (the Patexia caption reads "Hoymiles USA, Inc. et al.") was not confirmed; I found no such proceeding.

Key citations: CyboEnergy, Inc. v. Hoymiles Power Elecs. USA, Inc., No. 2:23-cv-00311-JRG, 2024 WL 1219725 (E.D. Tex. Mar. 20, 2024) (Dkt. 25); CyboEnergy, Inc. v. Altenergy Power Sys. USA, Inc., No. WA-22-cv-1136-KC, 2023 WL 5968000 (W.D. Tex. Sept. 13, 2023); Hoymiles USA, Inc. v. CyboEnergy, Inc., IPR2024-01106, Paper 10 (P.T.A.B. Oct. 28, 2024) (termination pre-institution on settlement).

I'll research the counsel of record for CyboEnergy in this case.

Let me pull the docket sheet and related filings for the exact counsel entries.

Let me get the docket parties/counsel page and IPR counsel details.

Counsel of Record for Plaintiff CyboEnergy, Inc.

Sourcing caveat up front: I could not pull a live PACER docket sheet for 2:23-cv-00311-JRG in this session. The identification below rests on (a) the signature block of Plaintiff's Original Complaint (Dkt. 1, filed June 27, 2023), which is available as a public PDF, (b) Ramey LLP's own press release announcing the filing, and (c) related dockets/court orders. The March 20, 2024 memorandum opinion (Dkt. 25) does not list counsel. I did not locate a separate "Notice of Attorney Appearance" entry or any pro hac vice order in this E.D. Tex. action, so the roster below is what the pleading record documents — nothing more. No local counsel appears on the complaint.

Documented counsel (from Dkt. 1 signature block)

That is the only attorney identified as Plaintiff's counsel in this case's complaint:

"Ramey LLP /s/ William P. Ramey, III — William P. Ramey, III, Texas State Bar No. 24027643, 5020 Montrose Blvd., Suite 800, Houston, Texas 77006 … Attorneys for CyboEnergy, Inc."
(Complaint PDF)

Ramey LLP's firm website confirms it filed this action on CyboEnergy's behalf on June 27, 2023, describing itself as an IP firm working nationally "from our Houston, Texas office," with William P. Ramey III as managing partner (rameyfirm.com).

Attorneys I could NOT confirm for this case

• Susan S.Q. Kalra (CA SBN 167940, Ramey LLP, Redwood City, CA office) and Jeffrey E. Kubiak — these Ramey LLP lawyers appear as Plaintiff's counsel in other CyboEnergy matters (e.g., CyboEnergy, Inc. v. Northern Electric Power Technology, Inc., N.D. Cal.) and in the Ramey firm's California docket generally. Neither name appears on the Dkt. 1 signature block in 2:23-cv-00311, and I found no appearance by them here. Treat them as unconfirmed for this case.
• "Guillermo P. Ramey III" — this appears only in the Spanish-language version of the Ramey LLP press release. It is a translation artifact of William P. Ramey III, not a separate attorney.
• No separate local/E.D. Tex. counsel is identified in the pleading record. Because Mr. Ramey holds a Texas bar number, no Texas-sponsored local counsel was required on the face of the complaint — though E.D. Tex. practice (Judge Gilstrap) generally expects a member of the bar of this court; I could not verify his E.D. Tex. admission status from the documents retrieved.
• No in-house counsel for CyboEnergy appears on the docket as retrieved.

Relevant litigation experience / notable matters (well sourced)

Ramey LLP / William P. Ramey III — plaintiff side, patent-heavy:

• Co-counsel history for CyboEnergy across a family of suits on the same two patents (’133 and ’489): v. Altenergy Power System USA (W.D. Tex. No. WA-22-CV-1136-KC, 2023 WL 5968000 — plaintiff lost a 12(b)(6) direct-infringement ruling); v. Aptos Solar Technology; v. Northern Electric Power Technology; v. Sensata Technologies; v. Home Depot U.S.A.; v. Deye ESS Technology USA; v. Duracell Power Center (Patexia related-case data; CourtListener parties page, Home Depot case).
• Other plaintiffs represented on a repeat-player basis include Koji IP, LLC, Nimitz Technologies LLC, and Lime Green Lighting, LLC.

Adverse rulings worth flagging (these are public and directly on point for counsel risk):

• Koji IP, LLC v. Renesas Electronics America, Inc., No. 24-cv-03089-PHK, 2025 WL 917110 (N.D. Cal. Mar. 26, 2025) — Judge Kang issued an order to show cause and imposed $45,264 in sanctions on Ramey firm lawyers, finding Ramey "regularly practice[s] law in California" without pro hac vice admission and required the order be attached to future pro hac applications (sanctions order PDF via Reuters).
• N.D. Cal. orders denying/sanctioning Ramey over inaccurate pro hac vice declarations in Lime Green Lighting, No. 5:25-cv-00950-VKD (Apr. 25, 2025), and No. 25-cv-01842-LJC (govinfo PDF).
• Nimitz Techs. LLC v. CNET Media, Inc., No. 21-1247-CFC, 2022 WL 17338396 (D. Del. Nov. 30, 2022) — sanctions noted for failure to obtain local counsel/pro hac admission.

Note that at least one N.D. Cal. order expressly cited this CyboEnergy campaign (CyboEnergy, Inc. v. N. Elec. Power Tech., Inc., No. 4:23-cv-06121-JST) as an example of pleadings signed with "pro hac vice anticipated" language.

Status flag

On the parallel PTAB front, IPR2024-01106 (Hoymiles USA, Inc. v. CyboEnergy, Inc.), filed June 27, 2024 on the ’133 patent, was terminated by settlement before institution on October 28, 2024, with the settlement agreement designated business-confidential (IPR docket summary; Docket Alarm). That strongly suggests the district action resolved by settlement as well, but I could not confirm a dismissal order or any withdrawal of counsel in 2:23-cv-00311-JRG from the sources retrieved — so the current counsel of record may have changed since filing, and the docket should be pulled directly from PACER to confirm.

I'll research the counsel of record for the defendant, Hoymiles Power Electronics USA, Inc., in this E.D. Tex. patent case.

Let me dig into the docket and specific filings to identify defendant's counsel.

The case appears to have settled via the IPR. Let me find the specific attorneys by examining dockets and filings.

I've found key IPR counsel. Let me pin down the district court counsel of record for Hoymiles.