Maxeon Solar Pte. Ltd. v. REC Solar Holdings AS

Maxeon Solar Pte. Ltd., a Singapore-headquartered operating company specializing in the design and manufacture of photovoltaic panels and solar energy solutions, initiated this patent infringement lawsuit. Maxeon Solar Technologies (NASDAQ: MAXN), the parent company, was spun off from American company SunPower in 2020 and holds an extensive global patent portfolio, including technologies like TOPCon (Tunnel Oxide Passivated Contact) solar cells. The defendant, REC Solar Holdings AS, is a Norwegian operating company that manufactures solar panels, including wafers and solar cells, with global operations.

The lawsuit alleged that REC Solar Holdings AS infringed Maxeon's patents related to TOPCon solar cell technology through the manufacture, import, and sale of its n-type solar panels, specifically naming REC Solar's N-Peak Black Series Solar Panels (e.g., REC320NP-BLACK, REC390NP3-BLACK, REC400NP3-BLACK) as the accused products. Maxeon asserted three U.S. patents: U.S. Patent No. 8,222,516, covering foundational solar cell structure technology; U.S. Patent No. 8,878,053, directed at solar cell fabrication and interconnection methods; and U.S. Patent No. 11,251,315, a more recent patent covering advanced photovoltaic cell configurations and generally related to solar cells with improved lifetime, passivation, and/or efficiency.

The case was filed in the U.S. District Court for the Eastern District of Texas under Judge J. Rodney Gilstrap. This venue is notable for its historical reputation as a "rocket docket" for patent cases, known for its expedited trial schedules and perceived plaintiff-friendly environment, often making it a preferred forum for patent owners despite changes in venue rules. The litigation is part of a broader industry context where TOPCon solar cell technology is rapidly gaining market share due to its high efficiency and performance. Maxeon has been actively enforcing its intellectual property in this space, filing similar lawsuits against other major solar manufacturers globally. Further reflecting the contested nature of the asserted IP, REC Solar Holdings AS filed an Inter Partes Review (IPR2025-00594) against U.S. Patent No. 11,251,315 at the Patent Trial and Appeal Board (PTAB) on February 14, 2025. The district court case was dismissed without prejudice on June 25, 2025, following a joint motion, which typically signals a negotiated resolution between the parties, such as a licensing agreement.

Maxeon Solar Pte. Ltd. v. REC Solar Holdings AS, Case No. 2:24-cv-00260-JRG, in the U.S. District Court for the Eastern District of Texas, involved allegations of patent infringement related to U.S. Patent No. 11,251,315. The case concluded with a dismissal without prejudice, indicative of a private settlement.

Here's a chronological overview of the key legal developments and outcome:

Filing & Initial Pleadings:

• 2024-04-19: Maxeon Solar Pte. Ltd. filed a complaint against REC Solar Holdings AS, asserting infringement of U.S. Patent Nos. 8,222,516, 8,878,053, and 11,251,315. The complaint detailed Maxeon's ownership of the patents and alleged direct and/or indirect infringement by REC Solar, seeking damages and enhanced damages for willful infringement.
• Pleadings and Counterclaims: While specific dates for REC Solar's answer and counterclaims are not explicitly detailed in the provided snippets for this specific case, it is noted that defendants in parallel Maxeon cases, such as Hanwha, filed counterclaims. It is common practice for defendants in patent infringement suits to file counterclaims challenging patent validity.

Pre-trial Motions of Substance:

• 2025-02-19: REC Solar Holdings AS filed an opposed motion to stay the district court litigation pending inter partes review (IPR) proceedings. Motions to stay pending IPR are common in patent litigation, particularly when IPR petitions are instituted, as they can streamline litigation by resolving validity challenges at the USPTO.

Claim Construction (Markman) Outcomes:

• 2025-12-03: A Markman hearing was scheduled for December 3, 2025, before District Judge Rodney Gilstrap. Given the dismissal date, it is unlikely a ruling on claim construction was issued or became highly significant to the final outcome.

Discovery Milestones:

• Discovery Schedule: A Docket Control Order from February 5, 2025, outlined a schedule including a Markman Hearing on December 3, 2025, a Pretrial Conference on April 27, 2026, and Jury Selection on June 1, 2026. Specific discovery milestones are not detailed in the provided search results but would have occurred within this general schedule.

Trial Events, Verdict, and Post-trial Motions:

• The case was dismissed before reaching trial.

Settlement, Dismissal, Judgment, or Appeal:

• 2025-06-25: The case was dismissed without prejudice. This dismissal followed a joint motion for entry of a proposed docket control order dated February 5, 2025. A dismissal without prejudice following a joint motion typically indicates a negotiated resolution or settlement between the parties, allowing Maxeon to refile the lawsuit under certain conditions.

Parallel PTAB IPR/PGR Proceedings:

• 2025-02-14: REC Solar Holdings AS filed an Inter Partes Review (IPR) petition against U.S. Patent No. 11,251,315, identified as IPR2025-00594. This IPR was formally instituted on August 14, 2025.
• 2024-06-25 & 2024-07-19: Canadian Solar Inc. (CSI), a defendant in a parallel Maxeon lawsuit, also filed IPR petitions challenging claims of U.S. Patent No. 11,251,315, among others. REC Solar's IPR petitions requested joinder with these corresponding CSI IPR petitions.
• 2026-01-16: The Patent Trial and Appeal Board (PTAB) issued a ruling in a parallel IPR against Canadian Solar regarding the '315 patent, upholding its validity. The PTAB stated that Canadian Solar was unable to demonstrate by a preponderance of the evidence that the patent was unpatentable.
• Effect on Litigation: The filing of IPR petitions by REC Solar and the related motion to stay aimed to put the district court litigation on hold, allowing the PTAB to first assess the patent's validity. Although the district court case was dismissed before a definitive ruling on the motion to stay in this specific case, the existence of these parallel proceedings often creates leverage for settlement. The PTAB's eventual upholding of the '315 patent's validity in a parallel IPR against Canadian Solar (albeit after the dismissal of this specific case) indicates Maxeon's continued strength regarding this patent.

Counsel of Record for Maxeon Solar Pte. Ltd. Identified in Patent Infringement Case

In the patent infringement case Maxeon Solar Pte. Ltd. v. REC Solar Holdings AS, filed in the U.S. District Court for the Eastern District of Texas (Case No. 2:24-cv-00260-JRG), the plaintiff, Maxeon Solar Pte. Ltd., was represented by attorneys from Vinson & Elkins LLP. The case was ultimately dismissed without prejudice following a joint motion.

The following attorneys were identified as counsel of record for Maxeon Solar Pte. Ltd.:

• Hilary L. Preston

  • Role: Likely lead counsel, given her extensive experience in intellectual property and complex commercial litigation.
  • Firm: Vinson & Elkins LLP, Austin, TX.
  • Relevant Experience: Preston is known for her work in high-stakes intellectual property and commercial disputes, often representing clients in the technology sector.

• Eric Joseph Klein

  • Role: Attorney.
  • Firm: Vinson & Elkins LLP, Dallas, TX.
  • Relevant Experience: Klein's practice focuses on intellectual property litigation, including patent, trademark, and copyright disputes.

• Erik Chiles Shallman

  • Role: Attorney.
  • Firm: Vinson & Elkins LLP, Austin, TX.
  • Relevant Experience: Shallman practices intellectual property litigation, representing clients in patent infringement cases across various technologies.

• Paige Holland Wright

  • Role: Attorney.
  • Firm: Vinson & Elkins LLP, Dallas, TX.
  • Relevant Experience: Wright is involved in complex commercial litigation, including intellectual property matters.

• Jeffrey R. Swigart

  • Role: Attorney.
  • Firm: Vinson & Elkins LLP, Dallas, TX.
  • Relevant Experience: Swigart focuses on intellectual property litigation, with experience in patent disputes in federal courts.

• Corbin J. Cessna

  • Role: Attorney.
  • Firm: Vinson & Elkins LLP, Austin, TX.
  • Relevant Experience: Cessna's practice includes intellectual property litigation, advising clients on patent and technology-related matters.

The patent at issue in this case was U.S. Patent No. 11,251,315, which covers advanced photovoltaic cell configurations. Maxeon also initiated other patent infringement lawsuits in the Eastern District of Texas around the same time, alleging infringement of patents related to TOPCon solar cell technology.

Here is the counsel of record representing REC Solar Holdings AS in Maxeon Solar Pte. Ltd. v. REC Solar Holdings AS, Case No. 2:24-cv-00260-JRG:

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

• James R. Barney

  • Role: Partner, likely lead counsel.
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Experience Note: Nationally recognized patent litigator and appellate advocate with experience across various industries, including automotive, medical devices, chemicals, consumer electronics, financial services, and entertainment, before U.S. district courts, the ITC, and the Federal Circuit.

• Jordan Michaela Cowger

  • Role: Attorney, likely supporting counsel.
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Experience Note: Focuses on patent litigation in a variety of technical areas, leveraging experience as a former law clerk in the Eastern District of Texas to advise clients on litigation procedure.

• Eric Hugh Findlay

  • Role: Partner, likely local counsel (given his frequent appearances in E.D. Texas).
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (though his firm in the search results is not explicitly stated as Finnegan, he is listed alongside Finnegan attorneys, and Finnegan has a robust E.D. Texas practice). While search results tie him to REC Solar in this case, his specific firm and detailed experience are not directly available in the provided snippets. Given the association with other Finnegan attorneys on the defense team, it's highly probable he is also from Finnegan or a co-counsel. To be fully accurate, further information would be needed to confirm his specific firm and office details if not Finnegan.
  • Experience Note: His listing in the PacerMonitor event indicates an appearance for the defendant in E.D. Texas.

• Mareesa A. Frederick

  • Role: Partner, likely lead counsel for ITC-related aspects or overall strategy.
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Experience Note: Focuses on complex, high-stakes intellectual property litigation, with a particular emphasis on Section 337 proceedings before the International Trade Commission (ITC), and has experience in a broad range of technologies including solar cells. Notably, she secured a victory for REC Solar Holdings as a respondent in an ITC investigation involving solar cells.

• Anthony A. Hartmann

  • Role: Partner, likely supporting counsel.
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Experience Note: Counsels clients and is active in all aspects of patent litigation in U.S. federal district courts and before the ITC, with a technical background as a former process engineer and experience in various chemical and mechanical technologies, including solar cells.

• Forrest Jones

  • Role: Partner, likely supporting counsel.
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC.
  • Experience Note: Focuses on patent litigation, including at the ITC and PTAB proceedings, and has technical and legal experience in various areas of electrical and computer engineering, including solar cells and panels. He also has experience representing REC before the U.S. District Court for the Eastern District of Texas and in parallel IPR filings regarding TOPCon solar cells.

• Gary C. Ma

  • Role: Partner, likely supporting counsel or international coordination.
  • Firm & Office: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Taipei, Taiwan.
  • Experience Note: Managing partner of Finnegan's Taipei office, specializing in patent and trade secret litigations before U.S. district courts and the ITC, and has experience with high-stakes patent licensing negotiations.