Pair of LA-Based Solar Installers Head to Court for Patent Fight

  • Solar installation rivals PermaCity and Orion Solar Racking are headed to federal court in California for a dispute over PermaCity’s patented roof mounting technology and an alleged breach of a non-disclosure agreement.

PermaCity Corporation, a solar installation company based on Los Angeles, has sued rival Orion Solar Racking Inc. in federal court in California for alleged patent infringement and breach of a non-disclosure agreement (NDA). PermaCity manufactures and sells a roof-mounting product called SolarStrap, which is marketed as a faster and less expensive way to install solar panels.

The new lawsuit is one of several in the solar industry involving roof-mounting products. These lawsuits are potentially driven by the increasing pressure within the industry to reduce so-called “soft costs” related to residential roofing installations. One “soft cost” is the cost to install a solar array, and reducing the complexity of a rooftop installation can drive down this cost by greatly reducing the time required for installation. Roof-mounting technology – such as the SolarStrap product offered by PermaCity – is inextricably linked to the speed and cost of installation. Roof-mounting technology may also help drive down additional soft costs such as roof warranties by preventing post-installation roof leakage.

The lawsuit brought by PermaCity alleges that PermaCity and Orion worked together under the NDA in 2013 in the hopes of developing “a potential business relationship between the parties.” PermaCity alleges that it shared confidential details with Orion relating to the SolarStrap roof-mounting product prior to making that product publicly available. Those details included a confidential engineering study of the product’s performance. PermaCity alleges that after sharing those details, it discovered in 2015 that Orion was making and selling “a nearly exact copy” of the product and had rebranded the engineering study as its own. PermaCity accuses Orion of violating the NDA by copying the then-confidential product design and engineering study, and requests that the federal court prevent Orion from continuing to sell the product and award monetary damages to PermaCity.

PermaCity also alleges that the product sold by Orion infringes three of PermaCity’s patents: U.S. Patent Nos. 9,551,509; 9,742,347; and 9,985,574. Each of these patents appear directed to different aspects of a roof mounting system for solar panels that uses straps to interface between the roof and the panels. An example of the system is provided at Figure 7 of the 509 Patent:

In bringing the lawsuit, PermaCity has also taken the somewhat unusual step of suing the CEO and COO of Orion, alleging that they are individually liable for directing their company to commit acts of infringement and encouraging Orion’s customers to infringe.

Orion will next have an opportunity to answer PermaCity’s allegations. Regardless of how this particular proceeding is resolved, it demonstrates the increasingly high stakes of competitive residential solar roof-mounting technologies.

© 2009- Duane Morris LLP. Duane Morris is a registered service mark of Duane Morris LLP.

The opinions expressed on this blog are those of the author and are not to be construed as legal advice.

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