Rotterdam court conditionally releases Longi PV modules

This article was amended on July 21, 2021, to reflect that the District Court of Rotterdam on July 9 partially lifted the seizure of Longi PV modules, to the extent they have been delivered after June 16, or to a place outside of Longi’s warehousing partner, or upon receipt of proof they will not be distributed in markets where Hanwha’s patent applies. pv magazine previously reported Longi’s attempt to lift the seizure had “failed” and “been rejected” on July 14. The dates of permission to make the seizure, and of the seizure taking place, were June 11 and 16, respectively, rather than June 16 and 21, as previously reported. pv magazine previously reported Hanwha U.S. patent 9893215 had not been invalidated. However, this patent, which is the U.S. counterpart to the almost identical European patent 2 220 689 being subject to the court proceedings in the Netherlands, was invalidated on December 3 and 8 by the Patent Trial and Appeal Board of the United States Patent and Trademark Office in decisions IPR2019-01072 and IPR2019-01145, respectively. This updated report also includes a new statement from Longi.

As pv magazine reported earlier this month, a shipment of Longi products was seized in Rotterdam after Hanwha obtained permission from the Dutch authorities because of the risk the products could be exported into third-party European countries where a Hanwha patent applies.

The Dusseldorf Regional Court, in June last year, decided Longi – and other Chinese owned manufacturers JinkoSolar and REC Solar – had infringed the German part of Hanwha's patent EP 2 220 689, which relates to solar cell passivation technology. Hanwha had filed the patent infringement claim in March 2019. Longi filed an appeal against that Dusseldorf decision, the decision on which was due to have taken place in April, is now expected to be held later this year, according to sources close to the case.

With reference to the Hanwha patent, Q Cells parent Hanwha Solutions Corporation is understood to have conducted a seizure of the Longi products on June 16, having been given the go-ahead by the District Court in Rotterdam on June 11.

Longi challenged the order of the court which permitted the seizure.

Hanwha said: “On July 9, the District Court in Rotterdam … ordered Q Cells to release Longi's products under the condition that Longi can provide sufficient proof that such products would not be exported to countries where the relevant European patent, EP 2 220 689 ([the] ‘689 patent) is in force.

“Q Cells had already offered this option to Longi … and will of course, immediately release particular shipments/batches of seized products upon receiving the respective proof. However, up until now (Monday, July 12, 2021), no such proof has been provided.”

In a counterstatement on the matter, Longi said: “Longi has offered proof which is to be provided to the bailiff. Yet Hanwha's bailiff sought an unreasonable extent of proof.”

Protected

The Hanwha Q Cells’ statement continued: “Q Cells considers the rejection of Longi's challenge by the District Court in Rotterdam as another conformation that intellectual property rights in Europe are solid and can be effectively protected. Q Cells has taken these legal actions with the sole purpose to protect its intellectual property as well as the time and capital-intensive R&D efforts that the company continues to undertake in developing PV technology.

“Our hope is that such enforcement activity serves to protect European customers, who wish to purchase reliable, high quality solar modules, fairly developed and manufactured using fully patent protected technology.”

Hanwha was able to seize the PV panels because of the risk they might be exported to countries where its EP 2 220 689 European patent is in force.

The Longi statement continued: “Longi stresses that the seizure is lifted with respect to all products having been delivered to the warehouse after June 16 and at least now, the decision does not pertain to products owned by other companies than Longi (Netherlands) Trading BV.

“Longi considers both validity of Hanwha's patent as well as its infringement to not at all being settled – which can, for instance, be taken by the U.S. authorities having denied infringement of the parallel almost identical U.S. patent in first and second instance. Also, there the controversy continues. In any event Longi offers a variety of undisputedly non-infringing solar modules.”