ITC final determination finds Voltage in violation of Shoals trunk bus patents

Section 337 involves claims regarding intellectual property rights and trademark infringement, and this final ruling is a fairly definitive ending to a series of patent lawsuits involving the two companies that have stretched back years. In February, both companies, somewhat confusingly, declared victory in the case when the ITC made its initial ruling that the LYNX product was in violation of the Shoals patents, and PV Tech Premium spoke to sources familiar with both sides of the dispute to better understand the case, both its initial ruling in February and the final ruling last week.

“We alleged a violation of section 337. The ITC found a violation of section 337,” said Bobbie King, Shoals chief legal officer, speaking to PV Tech Premium after the final ruling was made. “There isn’t much more to this than they [Voltage] fought that allegation and lost.”

‘They are banned from importing this product’

For the most part, the final ITC ruling is in line with the initial determination: the LYNX trunk bus is in violation of the Shoals ‘big lead assembly’ (BLA) solution, which combines cables assembles, combiner boxes and fusing, and Voltage will be prevented from importing the product under a “limited exclusion order” (LEO).

The LEO will come into effect 60 days after the ruling, which was handed down on 25 June, during which time the case will enter what the ITC calls a “period of residential review”. At the end of this period, the office of the president could issue a different ruling to the ITC, and this would not be the first time that a Voltage-Shoals lawsuit has seen a sudden change in judgement: the ITC initially ruled in favour of Shoals during a 2024 lawsuit alleging patent infringement on the part of Voltage, but the ITC’s final determination was not in Shoals’ favour.

However, considering president Trump’s widespread efforts to disincentivise imports of products to the US from companies with ties to Asia, such a reversal of the ITC final determination would be a great surprise.

During the presidential review period, Voltage is able to continue selling the LYNX product, for instance to complete any orders agreed upon prior to the ITC ruling, but would have to post a bond set at 100% of the value of the product. Upon the completion of the review period, all of these bonds would be paid to the ITC, meaning Voltage will make no money from any future sales of the LYNX. After the presidential review period, assuming the president does not reverse the ITC decision, the LEO will take effect and the LYNX will be banned from import to the US.

“At the end of the presidential review period, they are banned from importing this product, point blank and period. If they follow the law, they won’t be making any money on this product,” explained King. “They’ll be able to fulfil whatever deliveries they have for the next 60 days, but they’ll have to post the bond, and those will be rendered unprofitable for them if they follow the letter of the law.”

Voltage shifts attention to LYNX PLUS

However, as was the case with the initial ruling, Voltage’s external communications have been largely upbeat. In February, the company led a press release with “Voltage wins again”, and last week, CEO Li Wang described the final determination as a “victory” for the company, which will “continue to innovate”.

This latter point on the company’s plans to “continue to innovate” is significant, as Voltage has shifted its attention away from the LYNX product. Sources with knowledge of the Voltage side of the lawsuit told PV Tech Premium that the company is focusing on a new product, LYNX PLUS, which was one of two products on display at the company’s booth at this year’s Intersolar Europe event, which was held last week in Munich.

Speaking to PV Tech Premium, Wang described the trunk bus as the result of the company’s “relentless commitment to long-term innovation and R&D”, and expressed confidence in the product’s future for Voltage.

“We are absolutely confident in the future of LYNX PLUS, and we believe it sets a new standard for the industry that reflects who Voltage Energy is and where we are going,” said Wang.

Crucially, Voltage’s sale of the LYNX PLUS product represents a realisation of a number of “alternative designs” (ADs) of the LYNX, to which the company made reference back in February during the court case. In February, Voltage pointed to a number of ADs of its LYNX product that it thought were not in violation of the two Shoals patents, and while these ADs existed as theoretical products at the time of the initial determination, at least one has been turned into a real product: the LYNX PLUS.

“Section 2 of the LEO expressly states that covered articles do not include redesign products that incorporate a design adjudicated in the investigation and found to be non-infringing,” explained a Voltage spokesperson who spoke to PV Tech Premium. “Because LYNX PLUS incorporates one of these confirmed non-infringing designs, Voltage Energy is able to continue importing and supplying LYNX PLUS now and in the future to the US market.”

When asked about the LYNX PLUS, King said that it did not have a significant market presence: “Their primary production in the trunk base space is the LYNX solution,” he told PV Tech Premium.

“They have worked around the edges with alternative designs, that they say don’t say violate our IP, but we have yet to see that actually take root in the marketplace, and they said it in open court in our trial in February that they had yet to have widespread market adoption of this alternative design.”

He went on to argue that the presence of the LYNX PLUS as a realisation of these ADs is also irrelevant to the enforcement of the 375 and 376 patents that are at the heart of this dispute, saying that efforts to sell this new product are as relevant to Shoals and its patents as efforts to “sell hockey pucks”.

“The case is around the LYNX trunk base, and the LYNX trunk bus has been found to violate Shoals’ IP,” he said. “Everything that confuses the issue in their press release is kind of besides the point; if they want to sell hockey pucks, that doesn’t violate our IP either.”

ITC rules that ‘unclean hands’ claim doesn’t invalidate patents

Another part of this case is an allegation of ‘unclean hands’, made by Voltage during the initial lawsuit, which can be broadly defined as a legal team acting in bad faith. While the ITC is clear that Shoals’ behaviour during the lawsuit did not constitute unclean hands—”Voltage has failed to show that the asserted patents are unenforceable due to unclean hands”—Voltage’s comments note that a North Carolina court found that Shoals’ legal counsel “violated an agreement” pertaining to the patents.

“Following a recent bench trial, the district court found that Shoals violated an agreement prohibiting its ITC counsel’s involvement in obtaining those new patents,” reads the Voltage press release.

A source with knowledge of the Voltage side of the lawsuit explained to PV Tech Premium that this violation pertains to the fact that this court case has gone on for several years now, and at times in different cases simultaneously.

During the first legal dispute in 2024, in which the ITC ruled that Voltage’s LYNX did not violate the Shoals BLA patents, Shoals began the process of “patent persecution”, which is the process by which a company works with the US Patent and Trademark Office to create a new patent. Shoals obtained new patents during the first case, in 2024, and the source stressed that simultaneously acquiring one set of patents, while defending another set of patents, is both perfectly legal and common practice in law.

However, Shoals signed an agreement that parties involved in the patent persecution would not be involved in patent enforcement, as the process of patent persecution means companies receive information—such as the technical details of other products on the market—to which they would not ordinarily have access. The ITC found that Shoals’ legal counsel—which King stressed to PV Tech Premium is the company’s former counsel—crossed this line.

“There is a portion of the ruling in the North Carolina case that says that but for certain actions by counsel—our counsel at the time, not our current council—we may have received the 375 and 376 patents earlier than we otherwise would have,” explained King, who notes that this is “not the affirmation of unclean hands”.

The case was heard simultaneously in both the ITC court and a North Carolina court, as the ITC can rule on a product’s eligibility to be imported to the US, and the North Carolina court can rule as to the damages one party involved in a court case must pay to another. This is not uncommon in law, but the separation of the courts’ responsibilities means that Shoals’ obtaining of the 375 and 376 patents in the North Carolina case is not related to Shoals’ enforcement of these patents in the ITC case, so this has no impact on Voltage’s violation of the Shoals patents.

What this does mean, however, is that when the North Carolina court meets in August to finalise damages that Voltage must pay to Shoals, they are likely to lower the figure that needs to be paid in order to reflect the fact that Shoals received the patents earlier than it otherwise would have. Neither the Shoals nor Voltage legal experts that PV Tech Premium spoke to would elaborate on how much these total damages could be, or how much they could be reduced by this decision.

What comes next?

Both sources that spoke to PV Tech Premium expressed confidence in their companies’ work moving forwards. For Voltage, its focus has clearly shifted towards the LYNX PLUS product, and both this trunk bus, and other variations, appear to have strong legal footing.

“LYNX PLUS uses an improved design that has been confirmed through the ITC investigation as non-infringing, ensuring uninterrupted supply of Voltage’s trunk bus solutions to the US market,” Wang told PV Tech Premium, making clear that Voltage intends to continue its work in the US.

The ITC ruling notes that Voltage submitted six ADs during the initial court case, and while three were found to be in violation of the Shoals patent—the ‘Spiral’, ‘Taper’ and ‘Taper-30’ designs—alongside the original LYNX product, three were found to not infringe on the 375 and 376 patents. Voltage itself has not drawn parallels between the LYNX plus and these designs, but there are at most three trunk bus products that it could continue to work on, without fear of infringing these two Shoals patents.

King, meanwhile, is confident in the strength of Shoals’ patents. He notes that there is a third patent in this debate—the 297 patent, which the Voltage source confirmed to PV Tech Premium had been spun out into a separate court case from the 375 and 376 patents—and the next step for Shoals will be to defend its 297 patent.

“We’ve alleged that certain alternative designs violate other patents, particular the 297 patent, in the North Carolina legislation,” said King. “The idea that a judge has said ‘oh they’re all free and clear’? That’s not what this says. This says they don’t violate the 375 and 376 patents; those aren’t our only patents.”

“We’ve never lacked confidence in our patents,” he added. “We view the overturning by the ITC in the first case we had against voltage as an aberration, not as a weakening in our patents. It showed when we brought this case, and they strongly upheld [the patents] in every way, shape and form; we got everything we asked for from the ITC.”