SMA Solar Technology AG

Patent Trials and Appeals Board

Mar 19, 2021

IPR2020-00021 (P.T.A.B. Mar. 19, 2021)

Trials@uspto.gov Paper 23
571-272-7822 Entered: March 19, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SOLAREDGE TECHNOLOGIES LTD.,
Petitioner,
v.
SMA SOLAR TECHNOLOGY AG,
Patent Owner.

IPR2020-00021
Patent 8,922,048 B2

Before JONI Y. CHANG, KRISTEN L. DROESCH, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
JUDGMENT
Final Written Decision
Determining No Challenged Claim Unpatentable
35 U.S.C. § 318(a)

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INTRODUCTION
A. Background and Summary
SolarEdge Technologies Ltd (“Petitioner”) filed a Petition to institute
an inter partes review of claims 1–10 of U.S. Patent No. 8,922,048 B2
(Ex. 1001, “the ’048 patent”). Paper 2 (“Petition” or “Pet.”). SMA Solar
Technology AG (“Patent Owner”) filed a Patent Owner Preliminary
Response. Paper 7. We instituted an inter partes review of claims 1–10 of
the ’048 patent on all grounds of unpatentability alleged in the Petition.
Paper 8 (“Institution Decision” or “Inst. Dec.”).
After institution of trial, Patent Owner filed a Response (Paper 12,
“PO Resp.”), Petitioner filed a Reply (Paper 15, “Pet. Reply”), and Patent
Owner filed a Sur-reply (Paper 16, “PO Sur-reply”).
An oral hearing was held on January 11, 2021, and the record contains
a transcript of this hearing. Paper 22 (“Tr.”).
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a). For the reasons that
follow, we determine that Petitioner has not shown by a preponderance of
the evidence that claims 1–10 of the ’048 patent are unpatentable.
B. Real Parties in Interest
Petitioner identifies SolarEdge Technologies Ltd. as the real party in
interest. Pet. 1.
Patent Owner identifies SMA Solar Technology AG as the real party
in interest. Paper 5, 1 (Patent Owner’s Mandatory Notices).
C. Related Matters
The parties identify the following inter partes review proceeding
involving the ’048 patent: Solaredge Technologies Ltd. v. SMA Solar
Technologies AG, IPR2020-00022. Paper 3, 2 (Petitioner’s Petition Ranking
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and Explanation of Material Differences Between Petitions); Paper 5, 1. We
denied institution of that request for inter partes review. IPR2020-00022,
Paper 8.
D. The ’048 Patent
The ’048 patent issued on December 30, 2014, from a PCT
application filed on February 11, 2009. Ex. 1001, codes (45), (22).
The ’048 patent is titled “PV [Photo Voltaic] Sub-generator Junction Box,
PV Generator Junction Box, and PV Inverter for a PV System, and PV
System.” Id., code (54).
Figure 1 of the ’048 patent is reproduced below.

Figure 1 “is an illustration of [a] PV system, in accordance with the prior
art” which includes various PV modules 3, PV sub-generator 1, PV
generator 6, and PV inverter 5. Ex. 1001, 6:58–59, 7:7–51. Figure 1 shows
PV sub-generator lines and PV main DC power lines 4'. Id. at 7:9–11. “The
mark across the PV sub-generator lines 4 or the PV main DC power lines 4'
identified by numeral 2 indicates that the line is preferably a two-wire line.”
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Id. at 7:11–14. The system is configured to disconnect “PV sub-generator
lines 4 or PV main DC power lines 4' . . . by a controllable circuit breaker
device 52 from a power section 51 of the PV inverter 5.” Id. at 7:14–17.
Additionally, “[i]n parallel to each of four PV sub-generator lines 4 or PV
main DC power lines 4’ in each case is a communication line 9 for
bidirectional transmission of data DAT between the central PV inverter 5
and the respective PV sub-generator junction box 1 shown in the right-hand
part of FIG. 1.” Id. at 7:17–22.
The ’048 patent describes an improvement in which the data lines are
removed and data communication is undertaken by “PV sub-generator line 4
or PV main DC power line 4.” Ex. 1001, 8:53–59. Furthermore, “[t]o
guarantee bidirectional data transmission, a data signal coupler 56 is
connected between each of the possible separation points.” Id. at 8:59–64.
Figure 3 of the ’048 patent is reproduced below.

Figure 3 “is an illustration of an exemplary PV system in accordance with
the invention” disclosed in the ’048 patent. Id. at 6:62–63. As shown in
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Figure 3, the data lines have been removed and only a single line—a DC
power line—connects inverter 5 with PV generator box 6 and a single line—
a DC power line—connects PV generator box 6 with each PV sub-generator
box 1. Id., Fig. 3.
Figure 6 of the ’048 patent is reproduced below.

Figure 6 “is an illustration of an exemplary generator junction box in
accordance with the invention” disclosed in the ’048 patent. Ex. 1001,
7:1–2. Figure 6 shows
data signal coupler 66 . . . connected in parallel to the respective
circuit breakers 60, 65 so that data DAT which is fed into the
respective PV sub-generator lines 4 and into the PV main DC
power line 4' is also able to be forwarded in the opened state of
the respective circuit breaker 60, 65.
Id. at 10:28–33.
E. Illustrative Claims
Petitioner challenges claims 1–10 of the ’048 patent. Pet. 1.
Claims 1, 4, 5, and 7 are independent. See Ex. 1001, 10:58–12:60. Claims 1
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and 4 are illustrative of the subject matter of the challenged claims and read
as follows:
1. A photovoltaic (PV) sub-generator junction box for
a PV system, comprising:
a plurality of electrical terminals for connection to
respective PV string lines of at least one series-connected PV
module; and
a sub-generator line terminal for connection to a remote
central PV inverter;
an electronic control unit connected for data
communication to a central control unit within the remote central
PV inverter for exchange of data;
wherein the PV sub-generator line is configured to deliver
power received from respective PV string lines to the remote
central PV inverter; and
a power line modem configured to transmit and receive the
data over the PV sub-generator line that delivers power;
wherein the electronic control unit includes at least one
electrical output for activating at least one switching device of
the PV sub-generator junction box, and wherein the data
receivable from the central control unit within the PV inverter by
the power line modem comprises corresponding control data.
4. A photovoltaic (PV) generator junction box for a
PV system, comprising:
a plurality of sub-generator line terminals for connection
to respective PV sub-generator lines of PV sub-generator
junction boxes;
a main DC power line terminal for connecting a PV main
DC power line of a remote central PV inverter;
at least one of a main circuit breaker for disconnecting the
PV main power line and a collective circuit breaker for
disconnecting a respective one of the PV sub-generator lines; and
a data signal coupler connected in parallel to a respective circuit
breaker of the at least one of the main circuit breaker and the
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collective circuit breaker, so that data to be transferred between
the respective PV sub-generator line and the PV main DC power
line is also able to be forwarded through the data signal coupler
when the respective circuit breaker is in an open state.
Id. at 10:58–11:11, 11:27–44.
F. Asserted Prior Art and Grounds
Petitioner asserts that claims 1–10 would have been unpatentable on
the following grounds:1
Claims Challenged 35 U.S.C. §2 References
1–10 103(a) Applicant Admitted Prior Art (AAPA),3 Rodgers4
1–3, 5, 7 103(a) AAPA, Frezzolini5
4, 6, 8–10 103(a) AAPA, Frezzolini, Iwamura6
4, 10 103(a) AAPA, Richter,7 Rodgers

1 Petitioner identifies three grounds, two of which have alternative
combinations: (1) AAPA and Rodgers or Frezzolini and (2) AAPA and
Rodgers or Frezzolini-Iwamura. Pet. 19. Each alternative combination has
been listed separately. Petitioner also lists AAPA and Rodgers as two
separate grounds directed to different claims. Id. Those grounds have been
combined.
2 The Leahy-Smith America Invents Act (“AIA”) included revisions to
35 U.S.C. §§ 102, 103 that became effective on March 16, 2013. Because
the ’048 patent issued from an application filed before March 16, 2013, we
apply the pre-AIA versions of the statutory bases for unpatentability.
3 Petitioner identifies Figures 1 and 2 and the text at column 2, line 54
through column 3, line 62; column 6, lines 58 through 61; and column 7,
line 7 through column 8, line 50 of the ’048 patent as applicant admitted
prior art (“AAPA”). Pet. 9.
4 US 2007/0008076 A1, published Jan. 11, 2007 (Ex. 1003).
5 US 2007/0019613 A1, published Jan. 25, 2007 (Ex. 1005).
6 US 2007/0213879 A1, published Sept. 13, 2007 (Ex. 1006).
7 WO 2007/048421 A2, published May 3, 2007 (Ex. 1004).
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Additionally, Petitioner relies on the Declarations of Jonathan R.
Wood, Ph.D. (Ex. 1011; Ex. 1020) and Patent Owner relies on the
Declarations of Thomas Blackburn (Ex. 2001; Ex. 2005).
ANALYSIS
A. Legal Standard for Assessing Obviousness
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), the
Supreme Court set out a framework for assessing obviousness under
35 U.S.C. § 103 that requires consideration of four factors: (1) the “level of
ordinary skill in the pertinent art,” (2) the “scope and content of the prior
art,” (3) the “differences between the prior art and the claims at issue,” and
(4) “secondary considerations” of non-obviousness such as “commercial
success, long-felt but unsolved needs, failure of others, etc.” Id. at 17–18.
“While the sequence of these questions might be reordered in any particular
case,” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), the U.S.
Court of Appeals for Federal Circuit has “repeatedly emphasized that an
obviousness inquiry requires examination of all four Graham factors and
that an obviousness determination can be made only after consideration of
each factor,” Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016),
overruled on other grounds by Aqua Prods., Inc. v. Matal, 872 F.3d 1290
(Fed. Cir. 2017) (en banc). We note that, with respect to the fourth Graham
factor, the parties have not presented argument or evidence directed to
secondary considerations of nonobviousness. See Pet.; PO Resp. The
analysis below addresses the first three Graham factors.
B. Level of Ordinary Skill in the Art
Factors pertinent to a determination of the level of ordinary skill in the
art include (1) the educational level of the inventor; (2) the types of
problems encountered in the art; (3) prior art solutions to those problems;
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(4) the rapidity with which innovations are made; (5) the sophistication of
the technology; and (6) the educational level of workers active in the field.
Envtl. Designs, Ltd. v. Union Oil Co. of Cal., 713 F.2d 693, 696–97 (Fed.
Cir. 1983) (citing Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc.,
707 F.2d 1376, 1381–82 (Fed. Cir. 1983)). Not all such factors may be
present in every case, and one or more of these or other factors may
predominate in a particular case. Id. Moreover, these factors are not
exhaustive, but are merely a guide to determining the level of ordinary skill
in the art. Daiichi Sankyo Co., Ltd., Inc. v. Apotex, Inc., 501 F.3d 1254,
1256 (Fed. Cir. 2007).
Petitioner argues—supported by the testimony of Dr. Wood—that a
person having ordinary skill in the art “would have had a bachelor’s degree
in mechanical engineering, electrical engineering, or a similar discipline and
at least two years of design experience with photovoltaic systems.” Pet. 20
(emphasis added) (citing Ex. 1011 ¶¶ 18–22).
In the Institution Decision, we adopted Petitioner’s description of a
person having ordinary skill in the art, “except that we delete[d] the qualifier
‘at least’ to eliminate vagueness as to the amount of practical experience.”
Inst. Dec. 15–16.
Patent Owner does not address that determination. See PO Resp.
Accordingly, for the reasons given in the Institution Decision, we adopt
Petitioner’s proposed level of ordinary skill, except that we delete the
qualifier “at least” to eliminate vagueness as to the amount of practical
experience. See Inst. Dec. 16. Therefore, a person having ordinary skill in
the art would have had a bachelor’s degree in mechanical engineering,
electrical engineering, or a similar discipline and two years of design
experience with photovoltaic systems.
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C. Claim Construction
We apply the same claim construction standard used in the federal
courts, in other words, the claim construction standard that would be used to
construe the claim in a civil action under 35 U.S.C. § 282(b), which is
articulated in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en
banc). 37 C.F.R. § 42.100(b) (2019). Under the Phillips standard, the
“words of a claim are generally given their ordinary and customary
meaning,” which is “the meaning that the term would have to a person of
ordinary skill in the art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.” Phillips, 415 F.3d at 1312–13
(quotation marks and citations omitted).
Petitioner argues that all claim terms should be construed according to
their ordinary and customary meaning at the time of the invention. Pet. 20.
Patent Owner argues that two terms require explicit constructions: “the
power line modem” and “the data signal coupler.” PO Resp. 20–22.
Because no express construction is needed to resolve any dispute in
this proceeding, we do not construe any of the claim limitations. See Nidec
Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
(Fed. Cir. 2017) (noting that “we need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’”
(citing Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed.
Cir. 1999))).
D. AAPA Grounds
Each of the grounds to the challenged claims in the Petition relies in
part on AAPA. Pet. 19.
Patent Owner argues Petitioner’s use of AAPA is improper under
35 U.S.C. § 311(a). See PO Resp. 55–56.
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1. Summary of AAPA
The ’048 patent identifies a prior art PV system including inverter 5,
generator junction box 6, sub-generator junction boxes 1, and connected PV
modules 3. See Ex. 1001, 2:64–3:52, 7:7–8:50, Fig. 1. AAPA includes DC
power lines—main DC power line 4' and sub-generator line 4—for
transferring power and a separate data communication line 9 for exchanging
data. Id. at 7:7–67, Fig. 1.
Petitioner annotated a version of Figure 1 of the ’048 patent, which is
reproduced below.

Pet. 21. Figure 1 “is an illustration of [a] PV system, in accordance with the
prior art” and has been annotated by Petitioner to identify the PV inverter
(yellow), the PV Generator Junction Box (red), the PV Sub-generator
Junction Box (green), and Series-connected PV Modules (blue). Id.;
Ex. 1001, 6:58–59.
2. Rodgers
Rodgers teaches a residential power distribution system 100, which
includes a power management system 300. Ex. 1003 ¶ 23. A webserver
communicates messages throughout the residential power distribution
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system by “send[ing]] and receiv[ing] power line communications (PLC)
messages via a conventionally known PLC modem.” Id. ¶ 24; see also id.
¶ 59 (“The dynamic load management system 300 further includes . . . a
PLC modem 304.”).
According to Rodgers, “[o]ne of the problems with PLC messaging is
that when current state-of-the-art circuit breakers are in the open position the
communication link is broken.” Ex. 1003 ¶ 34. In order to “overcome this
problem,” Rodgers teaches that “the PLC module (communications interface
224) spans the gap to provide a communication path between the line side of
the circuit and the load side by means of power line couplers 250a-d.” Id.
3. Frezzolini
Frezzolini teaches “a system wherein the transmission of data takes
place via power line carrier transmission along the power supply line of the
various electrical devices to which the control devices are associated.”
Ex. 1005 ¶ 2. More specifically, the “transmission occurs via power line
carrier transmission on the power supply line by means of modems
specifically produced for this function and known as PLM (Power Line
Modem).” Id. ¶ 16; see also id. ¶ 45.
4. Iwamura
Iwamura “provide[s] systems and methods for implementing and
controlling local power line communication (PLC) networks.” Ex. 1006,
code (57). Iwamura teaches using circuit breakers between central controller
130 and other elements of the PLC network. Id. ¶ 47. Iwamura further
teaches that “circuit breakers include a switch that opens when a current
exceeding a threshold is drawn through the circuit breaker” and that “[t]his
opening of the switch in a typical breaker also breaks PLC connections
between devices of a local PLC network.” Id.
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In order to allow communication when the switch is open, Iwamura
teaches using PLC signal coupler 742 to bridge circuit breaker switch even
when the switch is open. Ex. 1006 ¶ 58. Iwamura further teaches that “the
breaker PLC signal coupler 742 can include a transducer and may be an
inductive coupler such as toroid coupling transformer, a capacitive coupler
or other relevant coupler or combination of couplers, for coupling PLC data
through the PLC circuit breaker 720.” Id. ¶ 59.
5. Richter
Richter “relates to an electrical circuit arrangement for controlling the
output of at least one string of a solar generator.” Ex. 1004, code (57).
Richter teaches that various arrangements of solar modules and connecting
housings may be used to carry out the invention and for controlling—via
switches—the output of one or more connecting lines. Id. at 22:25–24:11,
Figs. 2–9.
6. Whether AAPA Forms the Basis of the Petition
a) The Guidance Memo8
The Director issued a Memorandum discussing how the PTAB will
treat a petitioner’s reliance on statements made in the specification of a
challenged patent. Guidance Memo.9 Such statements are frequently
referred to as applicant admitted prior art.

8 August 18, 2020, USPTO Memorandum addressing Treatment of
Statements of the Applicant in the Challenged Patent in Inter Partes Reviews
under § 311 (“Guidance Memo”), available at https://www.uspto.gov/
sites/default/files/documents/signed_aapa_guidance_memo.pdf. Petitioner
filed a copy of the Guidance Memo as Exhibit 1036.
9 The Director issued the Guidance Memo after the Institution Decision.
Petitioner addressed the Guidance Memo in its Reply and Patent Owner
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Section 311(b) of Title 35 of the U.S. Code limits the prior art that
may be used as the “basis” of an inter partes review to “patents or printed
publications.” 35 U.S.C. § 311(b); accord Guidance Memo 3. A patent
cannot be prior art to itself, and thus, the patent challenged in an inter partes
review cannot form the “basis” of an inter partes review. Guidance Memo
3–4. “The generally-understood meaning of ‘basis’ supports reading §
311(b) to require that at least one prior-art patent or printed publication form
the ‘foundation or starting point’ of the IPR, but not to foreclose
consideration of other pertinent patentability information.” Id. at 6 (footnote
omitted).
Notwithstanding the provisions of § 311(b), a properly conducted
obviousness analysis necessarily depends upon the knowledge possessed by
an ordinary-skilled artisan. Guidance Memo 5. The Guidance Memo sets
forth three permissible uses of statements made in the specification of the
patent that is being challenged in an inter partes review as evidence of
general knowledge:
Permissible uses of general knowledge of one having
ordinary skill under § 103 include (1) supplying missing claim
limitations that were generally known in the art prior to the
invention (for pre-AIA patents) or the effective filing date of the
claimed invention (for post-AIA patents); (2) supporting a
motivation to combine particular disclosures; or (3)
demonstrating the knowledge of the ordinarily-skilled artisan at
the time of the invention (for pre-AIA patents) or the effective
filing date of the claimed invention (for post-AIA patents) for
any other purpose related to patentability.

addressed it in its Sur-reply. See Pet. Reply 24; PO Sur-reply 3–11. Neither
party requested additional briefing.
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Id. at 6 (citing Koninklijke Philips N.V. v. Google LLC, 948 F.3d 1330,
1337–38 (Fed. Cir. 2020)); see also id. at 9 (stating that statements made in
the specification of the patent being challenged can be used as evidence of
general knowledge provided that “the basis of the IPR is one or more prior
art patents or printed publications”).
b) Petitioner’s Arguments
Petitioner argues that the patent applicant made admissions in the
specification “regarding the scope of the prior art that can be relied upon for
obviousness determinations during inter partes review.” Pet. 9 (citing Apple
Inc., v. Qualcomm Inc., IPR2018-01316, Paper 7 at 22 (PTAB Jan. 18, 2019)
(Institution Decision); One World Techs., Inc. v. The Chamberlain Group,
Inc., IPR2017-00126, Paper 8 at 8–10 (PTAB May 4, 2017) (Institution
Decision); MPEP § 2129) (other citations omitted). Petitioner further argues
that its use of AAPA in the Petition is consistent with the Guidance Memo
and Federal Circuit decisions. Pet. Reply 24 (citing Koninklijke Philips N.V.
v. Google LLC, 948 F.3d 1330, 1337 (Fed. Cir. 2020); Apple, Paper 7, 22).
Petitioner argues that “the disclosure of known prior art PV systems in the
’048 patent (i.e., the AAPA) ‘evidence[s] the general knowledge possessed
by [a PHOSITA]’ and is used in conjunction with various other prior art . . .
to supply missing claim limitations and support a motivation to combine
particular disclosures.” Id. (second alteration in original) (quoting Guidance
Memo 4). According to Petitioner, in this case “the AAPA can support an
obviousness argument.” Id. (citing Guidance Memo 4–6, 9).
Additionally, during the oral hearing, Petitioner argues that
determining the basis of the IPR involves looking at which prior art is used
to show the alleged point of novelty: “[T]o determine the basis of an IPR,
you don’t just count up the number of claim limitations that are admittedly
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known. Instead, we must consider what prior art is being used to teach the
allegedly novel features.” Tr. 10; accord id. at 11 (“I would state that the
starting point or the foundation of this IPR are the allegedly novel or
supposedly novel features in the patent.”). According to Petitioner, because
the Petition relies on prior art patents to show the ’048 patent’s alleged point
of novelty—the use of a bi-directional power line modem and a data bypass
coupler—AAPA was not used as the basis of the IPR. Id. at 10–11 (“As
discussed earlier, the focus of this IPR is centered directly on the disputed
power line modem and bypass coupler features, which the patent, the
prosecution history, and Patent Owner have consistently presented as the
alleged point of novelty.”).
c) Patent Owner’s Arguments
Patent Owner argues 35 U.S.C. § 311(b) limits inter partes review
such that “(1) only grounds under Section 102 or Section 103 can be raised,
and such 102/103 grounds can be raised based only on (2a) prior art patents,
or (2b) prior art printed publications.” PO Resp. 56. Patent Owner further
argues that its “statutory interpretation is supported by the promulgated rule
to implement the statutory provision,” namely, “37 C.F.R. § 42.104(b)(4)
states that an IPR petition ‘must specify where each element of the claim is
found in the prior art patents or printed publications relied upon.’” Id.
According to Patent Owner, “[w]ith a clear, unambiguous statutory text,
such as in the present case with Section 311(b), . . . the proper judicial role
‘is to apply, not amend, the work of the People[’]s representatives.’” Id. at
57 (quoting Henson v. Santander Consumer USA, 137 S. Ct. 1718, 1726
(2017)).
Patent Owner also argues that neither of the two PTAB decisions cited
by Petitioner “explains how the statutory text of Section 311(b) is
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ambiguous and thus warrants extra-textual interpretation to expand the
textual language to include admissions as a basis for institution.” PO
Resp. 58. Patent Owner further argues that those cases “contradict a holding
by another, earlier PTAB panel that holds under Section 311(b) that AAPA
description in the patent under review does not qualify as prior art on which
an inter partes review may be instituted.” Id. (citing Fresenius Kabi USA,
LLC v. Cephalon, Inc., IPR2016-00098, Paper 10 at 17 (PTAB May 4, 2016)
(Institution Decision)). Patent Owner further argues that using AAPA is
inconsistent with statements by Administrative Patent Judges in a PTO blog.
Id. at 59 (citing Jacqueline Bonilla & Sheridan Sneddan, AIA Blog Message
from Administrative Patent Judges Jacqueline Bonilla and Sheridan
Snedden: Routine and Additional Discovery in AIA Trial Proceedings: What
Is the Difference?, USPTO Website (Sept. 30, 2014, 10:01 AM),
https://www.uspto.gov/patent/laws-and-regulations/america-invents-act-
aia/aia-blog-message-administrative-patent-judges).
Patent Owner also argues that Petitioner’s use of AAPA in this
proceeding is not proper because it forms the basis of Petitioner’s
arguments. See PO Sur-reply 11; accord id. at 4–11. Specifically, Patent
Owner argues that the Guidance Memo “does not make a blanket statement
that AAPA can be combined with a prior art patent or printed publication.”
PO Sur-reply 4. Instead, Patent Owner argues that statements in the
specification of the ’048 patent “may not constitute ‘the basis’ of the [inter
partes] review.” Id. at 5 (citing Guidance Memo 6 n.4). According to
Patent Owner, because “AAPA forms the foundation or starting point for
each ground” in the Petition, “Petitioner employs AAPA as the basis of the
grounds in the Petition.” Id. at 6; accord id. at 6–11 (setting forth
arguments).
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Patent Owner argues during the oral hearing that Petitioner did not
make its point of novelty argument in its papers. Tr. 63.
d) Our Analysis
With regard to the parties’ legal arguments, the Guidance Memo is
“binding agency guidance to govern the Board’s implementation of various
statutory provisions, including directions regarding how those statutory
provisions shall be applied to sample fact patterns.” Guidance Memo 2
(citing 35 U.S.C. § 3(a)(2)(A); SOP 2,10 1–2). We incorporate the Guidance
Memo’s legal analysis and adopt it as our own. Accordingly,
Statements made in the specification of the patent that is
being challenged in an IPR can be used as evidence of such
general knowledge, and thus, provided the basis of the IPR is one
or more prior art patents or printed publications, can be used to
(1) supply missing claim limitations that were generally known
in the art prior to the invention (for pre-AIA patents) or the
effective filing date of the claimed invention (for post-AIA
patents); (2) support a motivation to combine particular
disclosures; or (3) demonstrate the knowledge of the ordinarily-
skilled artisan at the time of the invention (for pre-AIA patents)
or the effective filing date of the claimed invention (for post-AIA
patents) for any other purpose related to patentability.
Guidance Memo 9 (emphasis added).
We do not find Petitioner’s arguments regarding the use of applicant
admitted prior art persuasive. Petitioner cites two Board decisions using
applicant admitted prior art: Apple, IPR2018-01316, Paper 7 and One
World, IPR2017-00126, Paper 8. Pet. 9; Pet. Reply 24. However, the

10 Patent Trial and Appeal Board, Standard Operating Procedure 2 (Revision
10), available at https://www.uspto.gov/sites/default/files/documents/
SOP2%20R10%20FINAL.pdf.
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Guidance Memo found the rationale of those cases11 to be “not consistent
with the statute.” Guidance Memo 3.
Petitioner also relies on Koninklijke Philips, 948 F.3d 1330.
However, Koninklijke Philips does not explicitly discuss the use of applicant
admitted prior art nor does it explicitly hold that such admissions can be
used as the basis for an inter partes review. See 948 F.3d 1330. Instead, as
the Guidance Memo makes clear, Koninklijke Philips simply “holds that
evidence of general knowledge other than that found in a prior art patent or
printed publication can be used in an IPR” and “can supply legally relevant
information.” Guidance Memo 5–6. However, the Guidance Memo also
makes it clear that such statements cannot “constitute[e] the ‘basis’ of the
obviousness ground raised under§ 103.” Id. at 6.
Accordingly, based on the Guidance Memo, the issue in this
proceeding is whether AAPA is being used as the basis of the inter partes
review. We are not persuaded by Petitioner’s arguments that its use of
AAPA is consistent with the Guidance Memo. Instead, Petitioner
improperly uses AAPA as the basis for its arguments.
We focus our analysis on what was the starting point or foundation of
the challenges set forth in the Petition. Guidance Memo 6. As the Petition’s
Summary of the Argument makes clear, Petitioner’s arguments are based on
starting with what AAPA teaches and then modifying AAPA to add a
feature from prior art patents:
As explained herein, AAPA teaches virtually all elements
of the ’048 patent’s independent claims, including combiner

11 Petitioner cites to the decisions on institution. The Guidance Memo
discusses the Final Written Decisions. That difference is not material to the
analysis.
IPR2020-00021
Patent 8,922,048 B2
20
boxes (i.e., sub-generator and generator junction boxes) that
collect, monitor, and manage power flow from multiple DC
power sources for transmission to an inverter. For elements
arguably not taught by AAPA, both Rodgers and Frezzolini teach
PLC modems that transmits data over existing power lines, thus
eliminating the need for dedicated communication lines. In
addition, Richter teaches main circuit breakers for disconnecting
power lines between PV devices. Further, both Rodgers and
Iwamura teach data couplers for maintaining a PLC path across
an open switch. Adding these features to AAPA’s system would
have been obvious, and yields the alleged invention claimed in
the ’048 patent.
Consequently, the alleged invention would have been
obvious at least because a PHOSITA would have been motivated
to combine Rodgers’ or Frezzolini’s PLC modem, Richter’s
circuit breakers, and Rodgers’ or Iwamura’s data couplers with
AAPA’s system.
Pet. 18 (emphasis added). That is, Petitioner argues that a person having
ordinary skill in the art would have started with AAPA’s system and then
added additional elements to that foundation/starting point. See id.
Petitioner’s reason to combine the references further demonstrates that
the Petition uses AAPA as the foundation/starting point of the challenge.
For example, with regard to claim 1, Petitioner argues that “AAPA’s
sub-generator junction box exchanges data with inverter 5 via data
communication lines 9 and AAPA’s PV sub-generator line 4 is configured to
deliver power from sub-generator junction box 1 to inverter 5.” Pet. 26
(citation omitted). Petitioner further argues that a person having ordinary
skill in the art “would have been motivated to modify AAPA’s sub-generator
junction box 1—using Rodgers’ or Frezzolini’s PLC modem—to exchange
data with inverter 5 via sub-generator line 4 and/or PV main DC power
line 4'.” Id. at 27. That is, Petitioner argues that a person having ordinary
skill in the art would have modified AAPA to include a power line modem
IPR2020-00021
Patent 8,922,048 B2
21
from a Rodgers or Frezzolini—the prior art patents or publications. See id.
Petitioner offers similar reasons to combine the prior art for the other
independent claims. See Pet. 55, 79–80 (claim 4), 40–41 (claim 5), 45–46
(claim 7). Thus the reasons given to combine the prior art confirm that the
Petition uses AAPA as the foundation and starting point of the analysis.
Indeed, Petitioner conceded as much during the oral hearing. Counsel
for Petitioner agreed that the Petition’s theory was not based on starting with
a prior art reference such as Frezzolini, eliminating all of the elements
except for the power line modem, and then looking for a system—such as
AAPA—to use it with. Tr. 55–56. Instead, Counsel agreed that the
Petition’s theory was that a person having ordinary skill in the art would
have started with AAPA and then modified it in light of Frezzolini’s
teaching of using a power line modem:
[THE PANEL]: Taking a look, though, at the argument,
how you set it forth at the petition, and let’s just look at Frezzolini
for example. You’re not saying that a person skilled in the art
would have looked at Frezzolini, would have gotten rid of
everything except the power line modem, and then looked for
places to go and use that power line modem such as the applicant
admitted prior art; isn’t your argument a person of skill in the art
would have looked at the system in the applicant admitted prior
art, seen that they had separate data and power line, and then
realizing from Frezzolini that you can go and use the power lines
to transmit data, go and incorporate the power line modem and
getting rid of the data lines, isn’t that a fair description of what
you’re saying a person of skill in the art would have done?
MR. DIKE: That is a fair description, Your Honor.
Id. (emphasis added)
Not only did the Petition start with AAPA, but it relies on AAPA for
all of the claim limitation except for power line modems and data signal
couplers. See Pet. 20–25, 30–39, 42–47, 49–54, 59–73; Pet. Reply 4, 18–19;
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Patent 8,922,048 B2
22
Tr. 5–8. This can be seen below with emphases used to identify those
limitation that Petitioner argues are taught by AAPA:
1. A photovoltaic (PV) sub-generator junction box for
a PV system, comprising:
a plurality of electrical terminals for connection to
respective PV string lines of at least one series-connected PV
module; and
a sub-generator line terminal for connection to a remote
central PV inverter;
an electronic control unit connected for data
communication to a central control unit within the remote central
PV inverter for exchange of data;
wherein the PV sub-generator line is configured to deliver
power received from respective PV string lines to the remote
central PV inverter; and
a power line modem configured to transmit and receive the
data over the PV sub-generator line that delivers power;
wherein the electronic control unit includes at least one
electrical output for activating at least one switching device of
the PV sub-generator junction box, and wherein the data
receivable from the central control unit within the PV inverter by
the power line modem comprises corresponding control data.
4. A photovoltaic (PV) generator junction box for a
PV system, comprising:
a plurality of sub-generator line terminals for connection
to respective PV sub-generator lines of PV sub-generator
junction boxes;
a main DC power line terminal for connecting a PV main
DC power line of a remote central PV inverter;
at least one of a main circuit breaker for disconnecting the
PV main power line and a collective circuit breaker for
disconnecting a respective one of the PV sub-generator lines; and
a data signal coupler connected in parallel to a respective circuit
breaker of the at least one of the main circuit breaker and the
IPR2020-00021
Patent 8,922,048 B2
23
collective circuit breaker, so that data to be transferred between
the respective PV sub-generator line and the PV main DC power
line is also able to be forwarded through the data signal coupler
when the respective circuit breaker is in an open state.
Id. at 10:58–11:11, 11:27–44; Pet. 20–25, 30–39, 42–47, 49–54, 59–73; Pet.
Reply 4, 18–19; Tr. 5–8. Thus, Petitioner argues that the vast majority of
the limitations—that is the foundation of the inter parties review—of the
claims are found in AAPA.
We do not imply that the Guidance Memo prohibits the use of
applicant admissions as the “lead reference.” Instead, under the facts of this
case, the use of the AAPA as the lead reference combined with the use of
AAPA for nearly all of the claim limitations establishes that the Petitioner
uses AAPA as the basis—starting part and foundation—of its analysis.
We are also not persuaded by Petitioner’s argument that the basis of
an inter partes review can be found by determining the alleged point of
novelty of the invention. See Tr. 10–11 (arguing that, in determining
whether we can use the applicant’s admissions, “we must consider what
prior art is being used to teach the allegedly novel features” (emphasis
added)); id. at 11 (“Your Honor, I would state that the starting point or the
foundation of this IPR are the allegedly novel or supposedly novel features
in the patent.”).
First, Petitioner did not raise that argument in either the Petition or
Petitioner’s Reply. See Pet.; Pet. Reply. We do not consider arguments
raised for the first time during oral arguments. See Dell Inc. v. Acceleron,
LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (“Unless it chose to exercise its
waiver authority under 37 C.F.R. § 42.5(b), the Board was obligated to
dismiss Dell’s untimely argument given that the untimely argument in this
case was raised for the first time during oral argument.”); accord
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Patent 8,922,048 B2
24
Consolidated Trial Practice Guide12 85–86 (“No new evidence and
arguments. During an oral hearing, a party may rely upon appropriate
demonstrative exhibits as well as evidence that has been previously
submitted in the proceeding, but may only present arguments relied upon in
the papers previously submitted.” (italics added)). Accordingly, Petitioner’s
argument based on the point of novelty is forfeited.13
Second, even if we did consider the forfeited argument, we do not find
it persuasive. Nothing in the Guidance Memo suggests using the alleged
point of novelty as the test for determining what the basis of the inter partes
review is. Instead, based on the definition of “basis,” the Guidance Memo
directs us to determine if the admissions were used as the foundation or
starting point of the inter partes review. Guidance Memo 6.
Moreover, as the Supreme Court has recognized, “there is no legally
recognizable or protected ‘essential’ element, ‘gist’ or ‘heart’ of the
invention in a combination patent.” Aro Mfg. Co. v. Converible Top
Replacement Co., 365 U.S. 336, 345 (1961); see also Allen Eng’g Corp. v.
Bartell Indus., Inc., 299 F.3d 1336, 1345 (Fed. Cir. 2002) (citing Aro).
Indeed, based on the language of 35 U.S.C. § 103(a), the Federal Circuit has
explicitly held that the point of novelty test is “erroneous[]”; instead, the
proper focus is on “the subject matter of the invention ‘as a whole.’”
Rosemount, Inc. v. Beckman Instruments, Inc., 727 F.2d 1540, 1543 n.3
(Fed. Cir. 1984); accord 35 U.S.C. § 103(a) (“A patent may not be obtained

12 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
13 We note that Petitioner had the opportunity to raise that argument in its
Reply, which was filed a month after the Director issued the Guidance
Memo. We further note that Petitioner did not ask for additional briefing in
light of the Guidance Memo.
IPR2020-00021
Patent 8,922,048 B2
25
though the invention is not identically disclosed or described as set forth in
section 102, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would
have been obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.” (emphasis
added)). Because the point of novelty/gist of the invention test is
inappropriate in a obviousness analysis and Petitioner cites no legal
authority in support of its argument, we are not persuaded it is appropriate to
use in determining whether an admission in a specification forms the basis
of an obviousness challenge in an inter partes review. Instead, for the
reasons discussed above, we focus on the claimed subject matter as a whole.
Our reasoning regarding how to determine the basis of a challenge is
consistent with other post-Guidance Memo Board decisions. For example,
in Godo, the Board found the petitioner improperly used applicant admitted
prior art as the basis for the challenge when the claimed invention differed
from the admissions in only a “few respects.” Unified Patents, LLC v. Godo
Kaisha IP Bridge 1, IPR2020-01433, Paper 12, 11–12 (PTAB Jan. 27, 2021)
(Institution Decision). The Board further found that to the extent the
petitioner relied on a prior art reference, it was for a feature that was
“well-known” to a person having ordinary skill in the art. Id. at 12; see also
MED-EL Elektromedizinische Geräte Ges.m.b.H v. Advanced Bionics AG,
IPR2020-01016, Paper 13 at 38–39 (PTAB Dec. 8, 2020) (Institution
Decision) (determining that Petitioner’s reliance on AAPA as disclosing
several structural and functional limitations of a cochlear implant system,
and reliance on a prior art printed publication to disclose an additional
electrical system, rendered AAPA as the “basis” for that ground).
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Patent 8,922,048 B2
26
Similar to Godo, in this case, Petitioner relies on AAPA for the vast
majority of the limitations in the claims. Specifically, Petitioner relies on
AAPA for every limitation except for the power line modem and the data
signal coupler. See Pet. 10–11, 20–75; Tr. 5–8. Also similar to Godo¸ to the
extent a limitation is not found in AAPA, Petitioner argues that power line
modems and data signal couplers would have been well known to a person
having ordinary skill in the art. Pet. 5 (“[I]t was well known to use power
line modems and data signal couplers to transfer data over power lines in PV
systems . . . .”); 8 (“[I]t was also known to implement PLC techniques to
transmit data over power lines using power line modems.”); 9 (“A
PHOSITA would have known that PV systems, therefore, commonly use
data couplers—which enable data to be forwarded across an open circuit
breaker.”); Tr. 8 (“As we’ve already discussed, the only difference between
the admitted prior art and the claimed invention is the use of full-duplex DC
PLMs and bypass couplers. However, each of these components are well
known products and are taught in the prior art.” (emphasis added)).
On the other hand, the Board instituted trial in Advanced Micro
Devices even though the petition relied on applicant admitted prior art.
Advanced Micro Devices, Inc. v. Monterey Research, LLC, IPR2020-01124,
Paper 10 (PTAB January 27, 2021) (Institution Decision). In Advanced
Micro Devices, the Board held that the use of applicant admitted prior art to
“supply an allegedly missing claim limitation that was well known in the
prior art prior to the invention” was permissible. Id. at 44–45. More
specifically, the challenged patent identified the admitted prior art as
conventional. Id.
In contrast to Advanced Micro Devices, Petitioner does not use AAPA
to supply only a single missing limitation. Instead, as discussed above,
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Patent 8,922,048 B2
27
Petitioner used AAPA for a vast majority of the claim limitations.
Moreover, unlike in Advanced Micro Devices, the ’048 patent does not
identify AAPA as conventional; instead the ’048 patent states that prior art
systems were “[k]nown.” See Ex. 1001, 2:64–3:63; see also Guidance
Memo 5–6 (discussing how Panel may use admissions that describes the
prior art as “conventional” or “well-known”). Although AAPA might have
been “known” to the applicant, the evidence in the record suggests that
systems similar to the AAPA were not “well-known”:
Q. And what would lead you to believe that it’s
[(Figure 1 of the ’048 patent)] not a prior art PV system?
A. I’m not saying it’s not a prior art PV system. I
mean, there are persons of ordinary skill that would look at
Figure 1 and may not understand it as a prior art PV system.
This was drawn by the inventor of the ’048 patent in his
view of doing something -- some novel thing to arrive at the ’048
patent.
This is his view of a prior art PV system. But like I say, if
you look at all the prior art documents that I looked at, not one
of them show this exact system.
So, I mean, it’s -- if it was a prior art PV system well known
in the art, then you would expect to see something very similar
to this in a prior art document?
Ex. 1019, 50–51; see also Tr. 34 (Patent Owner does not concede that
AAPA was “known to the public.”). In fact, the PV systems taught in the art
of record do not demonstrate the system shown in AAPA. See Ex. 1004;
Ex. 1005; Ex. 1015 (article describing a PV Systems).
For the reasons sets forth above, all of Petitioner’s grounds depend on
the use of AAPA as the foundation or starting point. Accordingly, the use of
AAPA in this inter partes review is improper and we do not consider it.
Because Petitioner does not argue that the prior art patents and printed
IPR2020-00021
Patent 8,922,048 B2
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publications it relies on teach or suggest all of the limitations of the
challenged claims (see Pet.), Petitioner has not shown by a preponderance of
the evidence that claims 1–10 are unpatentable.14
CONCLUSION
For the foregoing reasons, we conclude that Petitioner has not
demonstrated by a preponderance of the evidence the unpatentability of
claims 1–10 of the ’048 patent. Specifically, Petitioner has not demonstrated
by a preponderance of the evidence that (1) claims 1–10 would have been
obvious under 35 U.S.C. § 103(a) in view of AAPA and Rodgers, (2) claims
1–3, 5, and 7 would have been obvious under 35 U.S.C. § 103(a) in view of
AAPA and Frezzolini, (3) claims 4, 6, and 8–10 would have been obvious
under 35 U.S.C. § 103(a) in view of AAPA, Frezzolini, and Iwamura, and
(4) claims 4 and 10 would have been obvious under 35 U.S.C. § 103(a) in
view of AAPA, Richter, and Rodgers.
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that Petitioner has not shown by a preponderance of the
evidence that claims 1–10 of the ’048 patent are unpatentable; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

14 Because we determine that the use of AAPA in this inter partes review is
improper, we do not address Patent Owner’s remaining arguments as to why
the prior art does not teach a power line modem or data coupler that could be
used on a DC line or that a person having ordinary skill in the art would not
have combined the references. See Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (holding that once a dispositive issue is decided,
there is no need to decide other issues).
IPR2020-00021
Patent 8,922,048 B2
29

In summary:
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not Shown
Unpatentable
1–10 103(a) AAPA, Rodgers 1–10
1–3, 5, 7 103(a) AAPA, Frezzolini 1–3, 5, 7
4, 6, 8–10 103(a) AAPA, Frezzolini,
Iwamura
4, 6, 8–10
4,10 103(a) AAPA, Richter,
Rodgers
4, 10
Overall
Outcome
1–10
IPR2020-00021
Patent 8,922,048 B2
30
FOR PETITIONER:
Frederic Meeker
John R. Hutchins
Azuka C. Dike
Kurt C. Riester
Zachary Getzelman
BANNER & WITCOFF, Ltd.
fmeeker@bannerwitcoff.com
jhutchins@bannerwitcoff.com
adike@bannerwitcoff.com
kriester@bannerwitcoff.com
zgetzelman@bannerwitcoff.com
SolaredgeIPRService@bannerwitcoff.com
FOR PATENT OWNER:
Steven H. Slater
Michael Kucher
John D. Koetter
SLATER MATSIL, LLP
sslater@slatermatsil.com
mkucher@slatermatsil.com
jkoetter@slatermatsil.com

Thomas G. Eschweiler
ESCHWEILER & POTASHNIK, LLC
teschweiler@epiplaw.com