Rec Solar Pte. Ltd. v. HANWHA SOLUTIONS CORP., HANWHA QCELLS USA INC., Cross-Appellants 2023-1508,…

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
REC SOLAR PTE. LTD.,
Appellant
v.
HANWHA SOLUTIONS CORP., HANWHA Q CELLS
USA INC.,
Cross-Appellants
______________________
2023-1508, 2023-1516
______________________
Appeals from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Nos. IPR2021-
00988, IPR2021-00989.
______________________
Decided: January 21, 2025
______________________
J AMES R. BARNEY , Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, Washington, DC, argued for ap-
pellant. Also represented by MAREESA ARNITA F REDERICK,
ANTHONY A. HARTMANN, F ORREST ALEXANDER J ONES ,
ANDREA G RACE K LOCK MILLS .
MARK D. SELWYN, Wilmer Cutler Pickering Hale and
Dorr LLP, Palo Alto, CA, argued for cross-appellants. Also
represented by JASON K IPNIS ; D AVID L ANGDON
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REC SOLAR PTE. LTD. v. HANWHA SOLUTIONS CORP . 2
CAVANAUGH , N ORA N. XU, Washington, DC; ROBERT J.
G UNTHER, J R., New York, NY.
______________________
Before L OURIE, REYNA , and CUNNINGHAM , Circuit Judges.
L OURIE, Circuit Judge.
This appeal arises from two final written decisions of
the Patent Trial and Appeal Board (“the Board”), which
have been consolidated for our review.
REC Solar Pte. Ltd. (“REC”) appeals from a final writ-
ten decision of the Board holding claims 1–6, 11, and 13 of
U.S. Patent 10,749,060 (“the ’060 patent”) unpatentable as
obvious. Hanwha Sols. Corp. v. REC Solar Pte. Ltd.,
IPR2021-00988 (P.T.A.B. Dec. 9, 2022) (“the ’988 Deci-
sion”), J.A. 1–59.
Hanwha Solutions Corporation and Hanwha Q CELLS
USA (collectively, “Hanwha”) conditionally cross-appeal
from a final written decision of the Board holding that the
same claims were not shown to be unpatentable as obvious.
Hanwha Sols. Corp. v. REC Solar Pte. Ltd., IPR2021-00989
(P.T.A.B. Dec. 9, 2022) (“the ’989 Decision”), J.A. 60–89.
For the following reasons, we affirm the Board’s
’988 Decision. We therefore dismiss the cross-appeal of the
’989 Decision as moot because it was conditioned upon a
reversal of the ’988 Decision. See Appellee’s Br. 89.
BACKGROUND
REC owns the ’060 patent, which generally relates to a
solar-cell module comprising multiple solar cells. ’060 pa-
tent col. 1 ll. 5–6. Specifically, the ’060 patent is focused on
solving the problem of partial shading in a solar module
consisting of half-cut solar cells by dividing the entire solar
module in half and arranging the module into units of two
strings of series-connected half-cut cells. Id. col. 1 l. 23–
col. 2 l. 50. In this arrangement, each string is connected
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REC SOLAR PTE. LTD. v. HANWHA SOLUTIONS CORP . 3
in parallel with both the other string in the other half of
that unit and a bypass diode. Id.
Hanwha filed two Petitions for inter partes review
(“IPR”) challenging claims 1–6, 11, and 13 of the ’060 pa-
tent. In the ’988 Decision, the Board determined that
claims 1–6, 11, and 13 were unpatentable as obvious over
the combination of Chinese patent publications
CN202585481U (“Huang”) and CN102044587A (“Wu”).
’988 Decision, J.A. 38. In contrast, the Board in the ’989
Decision determined that Hanwha failed to establish that
claims 1–6, 11, and 13 were obvious over the combination
of U.S. Patent 8,049,096 (“Yagiura”) and U.S. Publication
2013/0098423 (“Shimasaki”) or the combination of Yagiura,
Shimasaki, and Chinese patent publication
CN1020224865A (“Yan”). ’989 Decision, J.A. 87–88.
Both parties timely appealed, and we have jurisdiction
under 28 U.S.C. § 1295(a)(4)(A).
D ISCUSSION
We need only address the appeal for the ’988 Decision.
REC first argues that the Board’s obviousness determina-
tion was flawed because the Board exceeded its authority
under the Administrative Procedure Act (“APA”), 5
U.S.C. § 554(b)(3), when it held claims 1–6, 11, and 13 ob-
vious over Huang and Wu based on a new obviousness the-
ory that Hanwha never raised and REC never had the
opportunity to rebut. REC contends that the Board’s anal-
ysis relied on a new theory because it ignored how Hanwha
conditioned its obviousness theory on Huang disclosing by-
pass diodes contained in a junction box. We disagree.
REC’s argument mischaracterizes Hanwha’s petition
and the Board’s analysis. Hanwha did not condition its
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REC SOLAR PTE. LTD. v. HANWHA SOLUTIONS CORP . 4
obviousness argument upon a finding that Huang disclosed
bypass diodes in a junction box. Rather, Hanwha’s petition
plainly alleged that claims 1–6, 11, and 13 were obvious
over Huang in view of Wu. Accordingly, Hanwha argued,
and the Board agreed, that a person of ordinary skill in the
art would have been motivated to modify Huang to imple-
ment the multiple junction boxes of Wu to shorten the
length of the bus bar, reduce the series resistance, and im-
prove overall output performance as taught by Wu. J.A.
549–551; ’988 Decision, J.A. 27, 32. In so finding, the
Board stated that “whether or not Huang teaches a diode
in a junction box . . . is ultimately not critical to this as-
serted ground” because Wu provides that missing limita-
tion. Id. at 32. The Board therefore acted within its
authority under the APA and did not rely on any new obvi-
ousness theory.
REC next argues that the Board’s obviousness finding
regarding dependent claims 5, 6, and 13 was not supported
by substantial evidence because combining Huang and Wu
does not “naturally result” in the single assembly cross-
connector limitation as required by those claims. We disa-
gree.
The Board’s obviousness findings were supported by
substantial evidence. REC again mischaracterizes the
Board’s analysis and our precedent by arguing that
Hanwha was required to prove this limitation through in-
herent obviousness since neither Huang nor Wu expressly
discloses a central cross-connector as a single assembly.
The Board, however, appropriately applied KSR in credit-
ing expert testimony that explained why a person of ordi-
nary skill would have found a single assembly cross-
connector a “predictable variation” on the prior art.
J.A. 36–37; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). The Board explained that once Wu’s multiple junc-
tion boxes are introduced to Huang, the modified cross-con-
nectors terminate at a single bypass diode, and as a result,
a person of ordinary skill in the art would have fabricated
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REC SOLAR PTE. LTD. v. HANWHA SOLUTIONS CORP . 5
the co-located cross-connectors as a single assembly. ’988
Decision, J.A. 36. In doing so, the Board credited the testi-
mony of Hanwha’s expert, Dr. Kimball, that combining
Huang and Wu would lead a skilled artisan to naturally
choose to fabricate the cross-connectors as a single assem-
bly. J.A. 35–37; see, e.g., J.A. 4443 ¶ 98. The Board also
noted that REC and its expert did not provide sufficient ev-
idence to refute this assertion. J.A. 36–37. Here too, the
Board’s obviousness findings are supported by substantial
evidence.
CONCLUSION
We have considered REC’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm.
AFFIRMED
COSTS
No costs.
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