UNITED STATES INTERNATIONAL TRADE COMMISSION
`Washington, D.C.
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`In the Matter of
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`CERTAIN PHOTOVOLTAIC
`CONNECTORS AND COMPONENTS
`THEREOF
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`Investigation No. 337-TA-1365
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`NOTICE OF A COMMISSION FINAL DETERMINATION FINDING NO VIOLATION
`OF SECTION 337; TERMINATION OF THE INVESTIGATION
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`AGENCY: U.S. International Trade Commission.
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`ACTION: Notice.
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`SUMMARY: Notice is hereby given that the U.S. International Trade Commission
`(“Commission”) has determined to reverse in part a final initial determination (“FID”) issued by
`the presiding administrative law judge (“ALJ”) finding a violation of section 337 of the Tariff
`Act of 1930, as amended. The investigation is terminated with a finding of no violation.
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`FOR FURTHER INFORMATION CONTACT: Paul Lall, Office of the General Counsel,
`U.S. International Trade Commission, 500 E Street, S.W., Washington, D.C. 20436, telephone
`(202) 205-2043. Copies of non-confidential documents filed in connection with this
`investigation may be viewed on the Commission’s electronic docket (EDIS) at
`https://edis.usitc.gov. For help accessing EDIS, please email EDIS3Help@usitc.gov. General
`information concerning the Commission may also be obtained by accessing its Internet server at
`https://www.usitc.gov. Hearing-impaired persons are advised that information on this matter can
`be obtained by contacting the Commission’s TDD terminal, telephone (202) 205-1810.
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`SUPPLEMENTARY INFORMATION: On June 9, 2023, the Commission instituted this
`investigation based on a complaint filed on behalf of Shoals Technologies Group, LLC (“Shoals
`Technologies”) of Portland, Tennessee. 88 FR 37905-06 (June 9, 2023). The complaint alleges
`violations of section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. 1337 (“section 337”),
`based upon the importation into the United States, the sale for importation, or sale within the
`United States after importation of certain photovoltaic connectors and components thereof by
`reason of infringement of certain claims of U.S. Patent Nos. 10,553,739 (“the ’739 patent”) and
`10,992,254 (“the ’254 patent”). The Commission’s notice of investigation (“NOI”) named the
`following eight respondents: 1) Hikam America, Inc. of Chula Vista, California; 2) Hikam
`Electrónica de México, S.A. de C.V. of Mexicali, Mexico; 3) Hikam Tecnologia de Sinaloa of
`Guasave, Mexico; 4) Hewtech Philippines Corp. of Laguna, Philippines; 5) Hewtech Philippines
`Electronics Corp. of Pampanga, Philippines; 6) Hewtech (Shenzhen) Electronics Co., Ltd. of
`Shenzhen, China (collectively the “Hikam Respondents”); 7) Voltage, LLC (“Voltage”) of
`Chapel Hill, North Carolina; and 8) Ningbo Voltage Smart Production Co. (“Ningbo Voltage”)
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`of Ningbo, China (collectively “Respondents”). Id. The Office of Unfair Import Investigations
`(“OUII”) was also named as a party in this investigation. Id. at 37906.
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`On August 15, 2023, the Commission amended the complaint and NOI to add allegations
`of infringement against Voltage related to certain claims of U.S. Patent No. 11,689,153 (“the
`’153 patent”). See Order No. 5 (Jul. 18, 2023), unreviewed by Comm’n Notice, 88 FR 56882-83
`(Aug. 21, 2023).
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`The presiding ALJ held a Markman hearing on December 13, 2023, and on February 20,
`2024, issued an order addressing claim construction for the ’739, ’254, and ’153 patents. See
`Order No. 16 (Feb. 20, 2024) (“Markman Order”). On February 28, 2024, Shoals filed a motion
`for reconsideration of the Markman Order’s construction of the term “engaged with” in claims 1
`and 10 of the ’739 patent. On March 4 and 5, 2024, Respondents and OUII filed oppositions to
`the motion, respectively.
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`On March 11, 2024, the Commission terminated the following claims from the
`investigation based on Shoals’ withdrawal of the complaint as to those claims: claims 2, 3, 6, 8,
`9, 11, 12, and 15-18 of the ’739 patent, claims 2-4, 8-12, 14, and 15 of the ’254 patent, and
`claims 2, 3, 6, and 15-17 of the ’153 patent. See Order No. 15 (Feb. 9, 2024), unreviewed by
`Comm’n Notice (March 11, 2024).
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`On March 25, 2024, the Commission terminated the ’254 patent from this investigation
`based on Shoals’ withdrawal of the complaint as to that patent. See Order No. 19 (Feb. 28,
`2024), unreviewed by Comm’n Notice (March 26, 2024).
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`On April 19, 2024, the Commission determined not to review the ALJ’s grant of
`summary determination that Shoals has not satisfied the technical prong of the domestic industry
`requirement for the ’739 Patent and, thus, found no violation as to the ’739 patent. Order No. 20
`(March 6, 2024), unreviewed by Comm’n Notice (Apr. 19, 2024). In Order No. 20, the ALJ also
`denied Shoals’ motion for reconsideration of the Markman Order. Id. Only the ’739 patent was
`asserted against the Hikam Respondents. See Comm’n Notice (Apr. 19, 2024); Am. Compl. at
`¶ 66. Accordingly, the Hikam Respondents were effectively terminated from the investigation as
`of the termination of the ’739 patent. On June 18, 2024, Shoals filed a notice of appeal with the
`U.S. Court of Appeals for the Federal Circuit appealing the Commission’s finding of no violation
`as to the ’739 patent. See Case No. 24-1991, Notice of Docketing (Fed. Cir. June 24, 2024). On
`December 18, 2024, the Federal Circuit issued an order dismissing the appeal based on a joint
`stipulation of voluntary dismissal. See Case No. 24-1991, Order (Fed. Cir. Dec. 18, 2024).
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`On April 26, 2024, the Commission terminated the investigation with respect to asserted
`claim 8 of the ’153 patent based on Shoals’ withdrawal of the complaint as to that claim. See
`Order No. 29 (April 2, 2024), unreviewed by Comm’n Notice (Apr. 26, 2024).
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`The ALJ held an evidentiary hearing on March 18-22, 2024. As of the hearing, Shoals
`asserted claims 1, 11-14, 18, 21, 23, and 24 of the ’153 patent against the accused Voltage Trunk
`Bus, and Voltage sought adjudication of the Voltage Alternative Design [“AD”] Trunk Bus with
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`respect to and claims 21 and 24 of the ’153 patent. Shoals also asserted that its DI product
`practices claims 1 and 21 of the ’153 patent for purposes of the DI requirement.
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`On August 30, 2024, the presiding ALJ issued the FID, finding that there has been a
`violation of section 337 in the importation into the United States, the sale for importation, and/or
`the sale in the United States after importation of certain photovoltaic connectors and components
`thereof with respect to certain claims of the ’153 patent. Specifically, the FID finds as to the
`’153 patent that: 1) the Voltage Trunk Bus and Voltage AD Trunk Bus have been imported into
`the United States, sold for importation, and/or sold within the United States after importation; 2)
`the Voltage Trunk Bus satisfies claims 1, 11-14, and 18; 3) the Voltage Trunk Bus does not
`satisfy claims 21, 23, and 24; 4) the Voltage AD Trunk Bus does not satisfy claims 1, 11-14, 18,
`21, 23, and 24; 5) Shoals has satisfied the technical prong of the DI requirement; 6) Shoals has
`satisfied the economic prong of the DI requirement; and 7) Voltage has not shown that claims 1,
`11-14, 18, 21, 23, and 24 are invalid under 35 U.S.C. § 112 for lack of written description and/or
`indefiniteness.
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`On September 13, 2024, the presiding ALJ issued a Recommended Determination on
`Remedy and Bonding (“RD”). The RD recommends that the Commission issue a limited
`exclusion order against Voltage in the event it finds a violation of section 337 and impose a bond
`of 100 percent during the period of Presidential Review.
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`On October 15 and 16, 2024, Shoals Technologies and Voltage, respectively, filed a
`statement on the public interest pursuant to Commission Rule 210.50(a)(4), 19 CFR
`210.50(a)(4). On October 15, 2024, Strata Clean Energy of Durham, N.C. filed a statement on
`the public interest in response to the Commission’s Federal Register notice. See 89 FR 76869-
`70 (Sept. 19, 2024).
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`On September 16, 2024, Shoals filed a petition for review of the FID, arguing that the
`ALJ should not have considered respondents’ redesign product, the Voltage AD Trunk Bus, as
`being within the scope of the investigation. On the same day, Respondents also filed a petition
`for review of the following of the FID’s findings: (1) the FID’s construction of the term
`“aperture” recited in the asserted claims of the ’153 patent; (2) the FID’s finding that the asserted
`claims of the ’153 patent are not invalid under 35 U.S.C. § 112 for lack of written description
`and/or indefiniteness; (3) the FID’s finding that Shoals has satisfied the domestic industry
`requirement with respect to an article protected by the ’153 patent; and (4) the FID’s
`determination to exclude the testimony of Voltage’s invalidity expert. Also on the same day,
`OUII filed a petition for review of the following of the FID’s findings: (1) the FID’s
`construction of the “aperture” terms; (2) the FID’s finding that Shoals’ has satisfied the technical
`prong of the domestic industry requirement; and (3) the FID’s determination to exclude the
`testimony of Voltage’s invalidity expert.
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`On September 24, 2024, Shoals, Voltage and OUII each filed responses to the respective
`petitions for review.
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` On October 4, 2024, Voltage filed a notice of supplemental authority, and on October 7,
`2024, Shoals filed a response to the notice. The Voltage Notice attached a copy of a September
`30, 2024 decision from the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board
`denying a petition by Voltage to institute post-grant review proceedings. See Voltage Notice,
`Ex. A (Voltage v. Shoals, PGR2024-00022).
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`On November 13, 2024, the Commission determined to review the FID in part. See 89
`FR 91424-27 (Nov. 19, 2024) (the “November 13, 2024 Commission Notice”). Specifically, the
`Commission reviewed the FID’s: (1) construction of the “aperture” terms recited in the asserted
`claims of the ’153 Patent; (2) finding that the accused products infringe the asserted claims of the
`’153 patent; (3) finding that the asserted claims of the ’153 patent are not invalid under 35 U.S.C.
`§ 112 for lack of written description and/or indefiniteness; and (4) finding that Shoals has
`satisfied the domestic industry requirement of section 337, including the FID’s findings
`concerning the technical prong and the economic prong. Id. at 91426. The Commission did not
`review the remaining findings in the FID.
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`In connection with its review, the Commission requested responses from the parties to
`certain question concerning the issues under review. Id. at 91426. The Commission also
`requested parties to the investigation, interested government agencies, and any other interested
`parties to file written submissions on the issues of remedy, the public interest, and bonding. Id.
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`On November 27, 2024, Shoals, Voltage and OUII each filed a response to the
`Commission’s November 13, 2024 notice. On December 5, 2024, Shoals, Voltage and OUII
`each filed a respective reply.
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`Having reviewed the record of the investigation, including the FID, the parties’ petitions
`for review and related submissions, and the parties’ responses to the Commission’s November
`13, 2024 Notice, the Commission has determined to: (1) construe the “aperture” terms recited in
`the asserted claims of the ’153 Patent such that the entire “drop line” recited in the claims means
`“the entire length of the underlying ‘drop line/wire’ within the undermold (and compression lug),
`just as the ‘feeder cable’ equates to the entire length of the underlying cable within the
`undermold (and compression lug)”; (2) reverse the FID’s finding that the accused Voltage Trunk
`Bus satisfies claims 1, 11-14, and 18 of the ’153 patent; and (3) reverse the FID’s finding that
`Shoals’ asserted domestic industry products satisfy the limitations of claims 1 and 21 of the ’153
`patent. The Commission takes no position on the other issues under review. Concurrent with
`this notice, the Commission has issued an opinion further explaining its determination.
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`The investigation is terminated with a finding of no violation of section 337.
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`The Commission’s vote on this determination took place on January 14, 2025.
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`The authority for the Commission’s determination is contained in section 337 of the
`Tariff Act of 1930, as amended (19 U.S.C. 1337), and in part 210 of the Commission’s Rules of
`Practice and Procedure (19 CFR part 210).
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`By order of the Commission.
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`Lisa R. Barton
`Secretary to the Commission
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`Issued: January 14, 2025
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