USITC Institutes Section 337 Investigation on Silicon Photovoltaic Cells and Modules

Simon Lester -

On July 14, the U.S. International Trade Commission (USITC) announced that it had voted to institute a Section 337 investigation of certain silicon photovoltaic cells and modules with nanostructures, and products containing the same. Some of the companies targeted in the investigation are Chinese. The complaint in the case alleges violations of Section 337 on the basis that the products in question infringe certain patents. The complainants are seeking to exclude these imported products from the U.S. market.

The formal Notice of Institution of Investigation is here (Inv. No. 337-TA-1271). In its announcement, the USITC explained that the USITC’s Chief Administrative Law Judge will now assign the case to one of the USITC’s administrative law judges (ALJ), who will schedule and hold an evidentiary hearing.  The ALJ will make an initial determination as to whether there is a violation of Section 337. That initial determination will then be subject to review by the USITC. The Notice further states that: “The USITC will make a final determination in the investigation at the earliest practicable time.  Within 45 days after institution of the investigation, the USITC will set a target date for completing the investigation.”

The complainant is Advanced Silicon Group Technologies, LLC of Lowell Massachusetts.

In its announcement, the USITC identified the following respondents:

Canadian Solar, Inc., of Guelph, Ontario, Canada;
Canadian Solar International Limited of Kowloon, Hong Kong, China;
Canadian Solar Manufacturing (Changshu) Co. Inc., of Changshu, Jiangsu, China;
Canadian Solar Manufacturing (Luoyang) Inc. of Luoyang, Henan Province, China;
Canadian Solar Manufacturing (Thailand) Co. Ltd. of Chon Buri, Thailand;
Canadian Solar Manufacturing Vietnam Co. Ltd. of Hai Phong City, Vietnam;
Canadian Solar Solutions, Inc., of Guelph, Ontario, Canada;
Canadian Solar Construction (USA) LLC of Walnut Creek, CA;
Canadian Solar (USA) Inc. of Walnut Creek, CA;
Recurrent Energy Group, Inc., of San Francisco, CA;
Recurrent Energy LLC of Walnut Creek, CA;
Recurrent Energy SH Proco LLC of Walnut Creek, CA;
Hanwha Q CELLS & Advanced Materials Corp. of Seoul, Republic of Korea;
Hanwha Q Cells GmbH of Bitterfeld-Wolfen, Germany;
Hanwha Q Cells Malaysia Sdn. Bhd. of Cyberjaya, Selangor, Malaysia;
Hanwha Q Cells (Qidong) Co., Ltd., of Qidong Jiangsu, China;
Hanwha Solutions Corporation of Seoul, Republic of Korea;
Hanwha Energy USA Holdings Corp. (dba 174 Power Global Corporation) of Irvine, CA;
Hanwha Q Cell EPC USA LLC of Irvine, CA;
Hanwha Q Cells America Inc. of Irvine, CA;
Hanwha Q Cells USA Corp. of Irvine, CA;
Hanwha Q Cells USA Inc. of Dalton, GA;
HQC Rock River Solar Holdings LLC of Irvine, CA;
HQC Rock River Solar Power Generation Station, LLC, of Beloit, WI;
Boviet Solar Technology Co., Ltd., of Noi Hoang District, Bac Giang Province, Vietnam;
Ningbo Boway Alloy Material Co., Ltd., of Ningbo City, Zhejiang Province, China;
Boviet Renewable Power LLC of San Jose, CA; and
Boviet Solar USA Ltd. of San Jose, CA.

The complaint was filed on June 11. It contains the following factual and legal arguments from the complainant.

The products at issue are “silicon photovoltaic cells and modules containing such cells ... in which at least one surface of the silicon photovoltaic cell has nanostructures.” According to the complaint, the products fall within the following classifications of the Harmonized Tariff Schedule of the United States: HTSUS codes 8541.40.6015 (photovoltaic modules); and 8541.40.6025 (photovoltaic cells intended for incorporation into photovoltaic modules). They may also fall within HTSUS codes 8501.31.8010, 8501.32.6010, 8501.6100.10, 8507.20.8010, and 8541.40.6035.

The patent infringements are described broadly in the complaint as follows:

Respondents have engaged in unfair acts in violation of Section 337 through and in connection with the unlicensed importation into the United States, sale for importation into the United States, and/or sale within the United States after importation of the Accused Products that infringe one or more claims of United States Patent No. 8,450,599 (ʼ599 Patent), United States Patent No. 8,852,981 (ʼ981 Patent), United States Patent No. 9,601,640 (ʼ640 Patent), United States Patent No. 9,768,331 (ʼ331 Patent), United States Patent No. 10,269,995 (ʼ995 Patent), and United States Patent No. 10,692,971 (ʼ971 Patent) (collectively, the “Asserted Patents”)

The complaint also describes certain related litigation:

164. Simultaneous with filing this Complaint, ASGT is filing in the U.S. District Court for the Northern District of California a complaint for patent infringement of the Asserted Patents by Canadian Solar and related companies alleging infringement of the Asserted Patents.

165. Simultaneous with filing this Complaint, ASGT is filing in the U.S. District Court for the Central District of California a complaint for patent infringement of the Asserted Patents by Hanwha-Q Cells and related companies alleging infringement of the Asserted Patents.

166. Simultaneous with filing this Complaint, ASGT is filing a complaint in the U.S. District Court for the Northern District of California for patent infringement of the Asserted Patents by Boviet Solar Technology Co., Ltd. and related companies alleging infringement of the Asserted Patents.

The relief requested by the complainants is a permanent limited exclusion order and a permanent cease and desist order, as follows:

(c) issue a permanent limited exclusion order, pursuant to Section 337(d) of the Tariff Act of 1930, as amended, excluding from entry into the United States all of Respondents’ silicon photovoltaic cells and modules and products containing same that infringe one or more claims of United States Patent No. 8,450,599, United States Patent No. 8,852,981, United States Patent No. 9,601,640, United States Patent No. 9,768,331, United States Patent No. 10,269,995, and United States Patent No. 10,692,971;

(d) issue a permanent cease and desist order, pursuant to Section 337 of the Tariff Act of 1930, as amended, prohibiting Respondents and related companies from at least offering for sale, selling for importation, importing, selling after importation, transferring, distributing, warehousing inventory for distribution, using, assembling, advertising, marketing, demonstrating, qualifying for use in the products of others, testing or installing solar cells and products containing same, including silicon photovoltaic, that infringe one or more claims of United States Patent No. 8,450,599, United States Patent No. 8,852,981, United States Patent No 9,601,640, United States Patent No. 9,768,331, United States Patent No. 10,269,995, and United States Patent No. 10,692,971;

(e) impose a bond during the 60-day Presidential review period pursuant to 19 U.S.C. § 1337(e)(l) and (f)(l) to prevent further injury to ASGT’s and ASG Inc.’s domestic industry relating to United States Patent No. 8,450,599, United States Patent No. 8,852,981, United States Patent No. 9,601,640, United States Patent No. 9,768,331, United States Patent No. 10,269,995, and United States Patent No. 10,692,971; and

(f) grant such other and further relief as the Commission deems just and proper based on the facts determined by the investigation and the authority of the Commission.

The Federal Register notice for the institution of the investigation is here.