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

This case involves an Inter Partes Review (IPR) filed by REC Solar Holdings AS and several affiliated entities against Maxeon Solar Pte Ltd. before the Patent Trial and Appeal Board (PTAB). The petitioner, REC Solar Holdings AS, is a solar power company headquartered in Singapore, a wholly-owned subsidiary of Reliance New Solar Energy Limited, known for producing silicon materials, wafers, solar cells, and modules. The patent owner, Maxeon Solar Pte Ltd., also based in Singapore, designs and manufactures photovoltaic panels and was spun off from the American company SunPower in 2020. Both companies are operating entities in the global solar energy industry.

The underlying dispute centers on Maxeon's assertions that REC Solar is infringing its patents related to Tunnel Oxide Passivated Contact (TOPCon) solar cell technology, specifically concerning n-type solar panels. The patent at issue in this IPR is US Patent 11251315, which generally describes "Solar cells with improved lifetime, passivation and/or efficiency" and "advanced photovoltaic cell configurations." Maxeon has been actively enforcing its intellectual property in TOPCon technology, initiating patent infringement lawsuits against multiple solar panel manufacturers.

The procedural posture of this matter is an Inter Partes Review, IPR2025-00594, filed with the Patent Trial and Appeal Board. The IPR was "Not Instituted - Procedural," meaning the PTAB did not proceed to the merits phase for reasons related to the petition itself, rather than the patentability of the claims. This IPR was filed in response to a patent infringement lawsuit brought by Maxeon Solar Pte. Ltd. against REC Solar Holdings AS in the U.S. District Court for the Eastern District of Texas (Case # 2:24-cv-00260), presided over by Judge Rodney Gilstrap. The district court case, filed on April 19, 2024, was ultimately dismissed without prejudice on June 25, 2025, which often indicates a negotiated settlement or licensing agreement between the parties. This IPR's "Not Instituted - Procedural" status, coupled with the district court dismissal, is notable as it reflects a common strategy where IPRs are used defensively against infringement claims, and their outcomes can be closely tied to the resolution of parallel district court litigation, significantly impacting the competitive landscape of advanced solar panel technology.

Legal Developments and Outcome in Maxeon Solar Pte. Ltd. v. REC Solar Holdings AS

This case involved patent infringement claims brought by Maxeon Solar Pte. Ltd. against REC Solar Holdings AS and related entities in the U.S. District Court for the Eastern District of Texas, concerning solar cell technology. A parallel Inter Partes Review (IPR) proceeding was also initiated by REC Solar Holdings AS challenging one of the asserted patents.

District Court Litigation: Maxeon Solar Pte. Ltd. v. REC Solar Holdings AS (2:24-cv-00260, E.D. Tex.)

Filing & Initial Pleadings:
Maxeon Solar Pte. Ltd. initiated a patent infringement lawsuit against REC Solar Holdings AS, REC Solar Pte. Ltd., REC US Holdings, Inc., REC Americas, LLC, Reliance New Energy Limited, and Reliance Industries Limited on April 19, 2024, in the U.S. District Court for the Eastern District of Texas. The lawsuit, presided over by Judge Rodney Gilstrap, asserted infringement of U.S. Patent Nos. 8,222,516, 8,878,053, and 11,251,315, which cover advanced solar cell technology, specifically relating to TOPCon (Tunnel Oxide Passivated Contact) cells. The complaint for patent infringement was filed on April 19, 2024. While the specific dates for REC Solar's answer and counterclaims are not detailed in the provided search results, REC Solar did file invalidity contentions on March 4, 2025.

Outcome:
The litigation concluded relatively swiftly with a joint motion to dismiss. On June 25, 2025, Judge Gilstrap granted the Joint Motion to Dismiss (Dkt. No. 46), ordering that all claims, defenses, and counterclaims be dismissed without prejudice. This outcome typically signifies a negotiated resolution between the parties, such as a license agreement, cross-licensing arrangement, or a covenant not to sue, preserving Maxeon's right to re-file infringement claims on the same patents in the future. No damages or injunctive relief were awarded.

Given the dismissal occurred just over a year after filing, the case did not proceed to claim construction (Markman), significant discovery milestones, or trial events.

Parallel PTAB IPR Proceeding: REC Solar Holdings AS v. Maxeon Solar Pte Ltd. (IPR2025-00594)

Filing & Status:
REC Solar Holdings AS filed an Inter Partes Review petition (IPR2025-00594) on February 14, 2025, challenging U.S. Patent No. 11,251,315, one of the patents asserted in the district court litigation. The IPR proceeding was terminated on August 14, 2025, with a status of "Not Instituted - Procedural".

Effect on Litigation:
The non-institution of IPR2025-00594 was due to procedural reasons. Maxeon, as the Patent Owner in the IPR, filed a Request for Discretionary Denial on June 17, 2025, arguing against institution. While the exact procedural basis for the denial is not explicitly detailed as a Fintiv denial in the provided information, the timing and the "procedural" nature of the denial strongly suggest it was a discretionary denial by the PTAB, likely influenced by the ongoing parallel district court litigation. The PTAB has various factors for discretionary denial, including those related to parallel proceedings, such as the Fintiv factors and "settled expectations" factors introduced by Acting Director Coke Morgan Stewart. The district court case was dismissed approximately one month after Maxeon's request for discretionary denial in the IPR, and before the IPR institution decision date. The dismissal of the district court litigation likely rendered the IPR moot or further supported its non-institution.

Counsel of Record for REC Solar Holdings AS et al. (Petitioner)

The following attorneys from Finnegan, Henderson, Farabow, Garrett & Dunner, LLP represent REC Solar Holdings AS and its related entities in IPR2025-00594:

• Joshua L. Goldberg

  • Role: Counsel for Petitioner.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC office.
  • Experience Note: Goldberg is a partner at Finnegan focusing on patent litigation, particularly in post-grant proceedings before the PTAB, and has experience with solar cell technology cases, including representing REC in previous IPR and ITC proceedings.

• James R. Barney

  • Role: Counsel for Petitioner.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC office.
  • Experience Note: Barney is a partner at Finnegan with extensive experience in patent litigation, including PTAB proceedings, and has also represented REC Solar Holdings AS in other intellectual property disputes.

• Mareesa A. Frederick

  • Role: Counsel for Petitioner.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC office.
  • Experience Note: Frederick is a partner at Finnegan, specializing in patent litigation before district courts, the Federal Circuit, and the ITC, and has experience with complex technology cases. She was also involved in representing REC Solar Holdings AS in ITC and IPR proceedings related to solar cells.

• Forrest A. Jones

  • Role: Counsel for Petitioner.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC office.
  • Experience Note: Jones is an attorney at Finnegan, whose practice includes patent litigation, particularly in the renewable energy sector, and PTAB post-grant proceedings.

• Anthony A. Hartmann

  • Role: Counsel for Petitioner.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC office.
  • Experience Note: Hartmann is an attorney at Finnegan, involved in patent litigation and post-grant proceedings, with experience in a range of technologies.

• William Neer

  • Role: Counsel for Petitioner.
  • Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC office.
  • Experience Note: Neer is an attorney at Finnegan, involved in patent litigation and PTAB proceedings, specifically listed as counsel for REC Solar Holdings AS in this IPR.

Additionally, while not listed as counsel of record for this specific IPR, Cheryl Ooi serves as in-house legal counsel and patent attorney for REC Solar Holdings AS, providing expert and strategic legal and IP advice globally. Colin Temme was also appointed General Counsel of REC Solar in February 2025, bringing experience in renewable energy and sustainable infrastructure.

Maxeon Solar Pte Ltd. has engaged several firms and individual attorneys in its patent disputes, including the IPR against REC Solar.

In IPR2025-00594, Maxeon Solar Pte. Ltd. appointed practitioners associated with PV Law LLP as its attorneys.

• Jacob A. Snodgrass (Reg. No. 66,032) - Lead Counsel.
  • Firm: PV Law LLP, Washington, DC.
  • Experience includes representing patent owners in inter partes review proceedings.
• Bradford A. Cangro - Back-up Counsel.
  • Firm: PV Law LLP, Washington, DC.
  • Also listed as lead counsel for Plaintiff Maxeon Solar Pte. Ltd. in the related district court case 2:24-cv-00260, where a motion to change lead attorney was filed on April 25, 2025.
• Jeremy D. Peterson.
  • Firm: PV Law LLP, Washington, DC.
• Jing Zhao.
  • Firm: PV Law LLP, Washington, DC.

Additionally, Marc Robinson, Associate General Counsel, Products and Technology at Maxeon Solar Technologies, Ltd., is listed in the Power of Attorney for IPR2025-00594. He oversees all intellectual property programs at Maxeon and is a registered patent attorney in the U.S.

For the parallel U.S. District Court case, Maxeon Solar Pte. Ltd. v. REC Solar Holdings AS, Case # 2:24-cv-00260, Maxeon was represented by attorneys from Vinson & Elkins. These include:

• Hilary L. Preston.
  • Firm: Vinson & Elkins.
• Eric Joseph Klein.
  • Firm: Vinson & Elkins LLP - Dallas.
• Erik Chiles Shallman.
  • Firm: Vinson & Elkins LLP - Austin.
• Paige Holland Wright.
  • Firm: Vinson & Elkins LLP - Dallas.
• Jeffrey R. Swigart.
  • Firm: Vinson & Elkins LLP - Dallas.
• Corbin J. Cessna.
  • Firm: Vinson & Elkins LLP - Austin.