Unified Patents v. First Solar Inc.

This case, IPR2025-01411, involves a challenge to U.S. Patent 9666732 before the Patent Trial and Appeal Board (PTAB). The petitioner is Unified Patents, a member-based organization dedicated to improving patent quality and deterring unsubstantiated or invalid patent assertions, particularly from Non-Practicing Entities (NPEs). The patent owner is First Solar Inc., an American publicly traded company known as a leading manufacturer of solar panels, specializing in rigid thin-film modules and advanced crystalline silicon (c-Si) Tunnel Oxide Passivated Contact (TOPCon) photovoltaic technology. The patent at issue, U.S. Patent 9666732, is titled "High-efficiency solar cell structures and methods of manufacture" and broadly covers improved solar cell structures and their manufacturing methods for increased efficiency, specifically relating to TOPCon crystalline silicon photovoltaic cells. First Solar acquired this patent through its 2013 purchase of TetraSun.

The procedural posture of IPR2025-01411 is before the Patent Trial and Appeal Board, where the petition was filed in 2025 but ultimately received a "Not Instituted - Procedural" status. This denial of institution was based on discretionary grounds by the Director of the United States Patent and Trademark Office (USPTO), a decision "divorced from the merits" of the invalidity challenge. The USPTO's reasoning in similar denials for First Solar's TOPCon patents, including 9666732, often invoked the "doctrine of settled expectations," which posits that the longer a patent has been in force (these patents were issued in 2015 and 2017), the stronger the patent owner's expectation of validity should be.

This case is notable for several reasons. It highlights the active role of Unified Patents in challenging patent validity, even against an operating company like First Solar, which has been actively licensing and enforcing its TOPCon technology patent portfolio through infringement investigations and lawsuits against other manufacturers in the solar industry. Furthermore, the discretionary denial of institution by the USPTO Director, particularly based on the "settled expectations" doctrine, is a significant development in PTAB practice, indicating the Board's willingness to use its discretion to limit IPR proceedings. While the provided metadata identifies Unified Patents as the petitioner for IPR2025-01411, it is worth noting that U.S. Patent 9666732 has also been a target of IPR petitions from other solar companies, such as Mundra Solar, which were similarly denied institution on discretionary grounds.

This summary outlines the key legal developments and outcome concerning US Patent 9666732, primarily focusing on the Inter Partes Review (IPR) proceeding IPR2025-01411 and its interaction with parallel patent infringement litigation.

Key Legal Developments and Outcome for IPR2025-01411 and Related Litigation:

1. Assertions of Patent Rights and Commencement of Litigation (2024-2025)

• July 2024: First Solar Inc. announced its intention to license and enforce its Tunnel Oxide Passivated Contact (TOPCon) technology patent portfolio, including US Patent 9666732, and began infringement investigations against several leading crystalline silicon solar cell manufacturers.
• November 2024: First Solar publicly warned shareholders and competitors, specifically naming companies like JinkoSolar, Trina Solar, Longi, JA Solar, and Canadian Solar, alleging unauthorized use of its TOPCon patents.
• February 2025: First Solar filed patent infringement lawsuits in the U.S. District Court for the District of Delaware against multiple companies, including JinkoSolar, Mundra Solar, and Canadian Solar, alleging infringement of its TOPCon-related patents, including US Patent 9666732. These cases remain pending.

2. Filing of Parallel PTAB IPR Proceedings (2025)

• 2025 (various dates): In response to First Solar's enforcement efforts, JinkoSolar, Mundra Solar, and Canadian Solar filed separate Inter Partes Review (IPR) petitions with the Patent Trial and Appeal Board (PTAB) challenging the validity of First Solar's TOPCon patents.
• August 15, 2025: Mundra Solar PV Ltd. filed IPR2025-01411 against First Solar Inc., challenging the validity of US Patent 9666732. Although the case caption lists Unified Patents, Mundra Solar PV Ltd. was the petitioner in this specific IPR.

3. IPR Non-Institution - Procedural Grounds (2025)

• December 11, 2025: The Director of the United States Patent and Trademark Office (USPTO) denied institution of IPR2025-01411, filed by Mundra Solar PV Ltd. against US Patent 9666732.
• Procedural Reason for Non-Institution: The denial was based on discretionary grounds, consistent with the USPTO's "Settled Expectations" doctrine. This doctrine considers the length of time a patent has been in force without successful challenge, strengthening the patent owner's expectations of validity. US Patent 9666732 was granted in 2017, well before the IPR petition was filed. Similar IPR petitions challenging First Solar's other TOPCon patents by JinkoSolar and Canadian Solar were also denied institution on November 20, 2025, and December 18, 2025, respectively, on similar discretionary grounds.

4. Post-IPR Developments in Parallel Litigation (2026)

• January 20-22, 2026: First Solar publicly announced the USPTO's rejection of all three IPR petitions, including IPR2025-01411, viewing the decisions as a confirmation of the strength of its patent portfolio. These denials allowed the ongoing infringement litigation in the District of Delaware to proceed without the patents being challenged at the PTAB.
• March 2026: The U.S. International Trade Commission (ITC) instituted a Section 337 investigation into certain TOPCon solar cells, modules, panels, and related components, based on a complaint filed by First Solar in February 2026. This ITC investigation runs parallel to the district court litigation.

Outcome:
The IPR proceeding IPR2025-01411 was Not Instituted due to procedural, discretionary reasons by the PTAB Director on December 11, 2025. This decision left US Patent 9666732 intact and unchallenged at the PTAB, allowing First Solar to continue its patent infringement litigation in the U.S. District Court for the District of Delaware against Mundra Solar and other parties, as well as the parallel Section 337 investigation at the ITC.

The specific counsel of record for Unified Patents in IPR2025-01411 cannot be definitively identified through web searches, as the public PTAB record for IPR2025-01411 lists "Mundra Solar PV Ltd." as the petitioner, not Unified Patents. The case was also not instituted due to procedural reasons.

However, adhering to the provided case metadata that Unified Patents is the plaintiff for IPR2025-01411, the following are attorneys and firms commonly involved in Unified Patents' IPR challenges, including both in-house and frequently engaged outside counsel:

In-House Counsel for Unified Patents:

• Jonathan Stroud
  • Role: Chief Operating Officer & Chief Legal Officer (COO & CLO), In-house counsel.
  • Firm: Unified Patents, LLC (Washington, D.C. area).
  • Note: Manages Unified Patents' legal and corporate work, focusing on PTAB, district court, and appellate litigation. He was previously a patent attorney at Finnegan, Henderson, Farabow, Garrett & Dunner LLP, where he worked on early post-grant review matters, and also served as a patent examiner at the USPTO.
• Jenn Bisk
  • Role: Senior Patent Counsel, In-house counsel.
  • Firm: Unified Patents, LLC.
  • Note: Member of the Unified Patents in-house legal team.
• Kyla Bulter
  • Role: Senior Patent Counsel, In-house counsel.
  • Firm: Unified Patents, LLC.
  • Note: Member of the Unified Patents in-house legal team.
• Jessica L.A. Marks
  • Role: Senior Patent Counsel, In-house counsel.
  • Firm: Unified Patents, LLC.
  • Note: Involved in managing PTAB cases for Unified Patents.
• Roshan Mansinghani
  • Role: Legal Head-NPE, In-house counsel.
  • Firm: Unified Patents, LLC.
  • Note: Involved in managing PTAB cases for Unified Patents and speaks on NPE litigation.

Commonly Engaged Outside Counsel for Unified Patents (Petitioner's Counsel in IPRs):

Unified Patents frequently works with a range of prominent intellectual property law firms for its PTAB challenges. While specific counsel for IPR2025-01411 is not identified under Unified Patents, the following firms are among those most frequently representing petitioners in PTAB proceedings, including for Unified Patents in other IPRs:

• Fish & Richardson PC
• Finnegan, Henderson, Farabow, Garrett & Dunner LLP
• Haynes & Boone LLP
• Sterne, Kessler, Goldstein & Fox PLLC
• Perkins Coie LLP
• Baker Botts LLP

It is common for Unified Patents to utilize outside counsel in conjunction with their in-house team for IPR filings. Given the procedural termination and the conflicting petitioner information, specific names of outside counsel for this particular IPR by Unified Patents are not publicly available in a verifiable way.

First Solar Inc., the defendant in IPR2025-01411, was represented by:

• Keith R. Hummel
  • Role: Lead Counsel
  • Firm and Office Location: Cravath, Swaine & Moore LLP, New York, NY.
  • Relevant Patent Litigation Experience: Keith R. Hummel is an experienced litigation attorney. He served as lead counsel for First Solar, Inc. in district court litigation concerning U.S. Patent No. 9,130,074, and applied for pro hac vice admission to represent First Solar in IPR2025-01411, indicating his role in defending First Solar's patent interests. His practice focuses on intellectual property litigation, including patent, trade secret, and copyright disputes, often involving complex technologies in various industries.

As the IPR was not instituted for procedural reasons, extensive counsel listings beyond key representatives are less common. Jason Dymbort, Executive Vice President, General Counsel, and Secretary of First Solar, has publicly commented on the company's success in defending its TOPCon patents against IPR petitions, indicating an in-house oversight role in these patent defense efforts.