IP SPOTLIGHT 9 June

SOLAR GIANT HANWHA HAS A LARGELY ‘UNDISCOVERED’ WIN

NEW L IMI TAT ION I NTRODUCED TO THE PATENT Claim 13: Solar cell according to any one of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 100 nm. The respondents had not addressed the other amendments sought by Hanwha in this same manner and consequently they failed in their bid for related discovery. maintaining legal professional privilege and confidentiality. After inspecting the unredacted form of the documents, the Court decided that the redactions were warranted on this basis and thus the respondent’s application failed in this respect. CONCLUS ION The application for further and better discovery was in large part dismissed. Burley J’s decision demonstrates that when considering the likely relevance, despite a common patentee and/or subject matter, patents in different patent families are considered to be unrelated patents, and, for the purposes of assessing applications for post grant amendments, prior art raised in respect of another patent family may not be considered relevant. As this application was filed in response to Hanwha’s amendment application, which was further filed in response to the infringement and cross claimed invalidity proceedings, it will be interesting to see how the proposed amendments will affect the subsequent proceedings. REDACTED DOCUMENTS Hanwha submitted that the redactions are related to

The Court considered the application/s in the following manner:

– – Should additional discovery be required? – – Are the redactions warranted?

Importantly, with the onus falling on the respondents, the Federal Court concluded that the respondents’ application failed, with the exception that it be entitled to additional discovery of one aspect. SHOULD ADD I T IONAL D I SCOVERY BE ORDERED? Hanwha stated that the reason for seeking their amendments was to ‘strengthen’ the claims and potentially reduce the scope of issues that may need to be determined (in light of prior art). In turn, the respondents contended that Hanwha had, amongst other things, failed to act promptly after becoming aware of circumstances that would lead a reasonable person to (apply to) amend earlier. The relevant circumstance is the Bhattacharyya prior art. Bhattacharyya was initially cited against a different patent family in 2015. Despite both patent families disclosing a solar cell and sharing some ‘common features’, the Court disagreed with the respondents noting that, whilst Hanwha was aware of Bhattacharyya, it was not until May 2019 that Bhattacharyya was cited against the Patent. 1 The respondents further contended that the proposed amendments are “the same as, or similar to” the amendments proposed in respect of the corresponding European Patent (i.e. the European patent in the same patent family), so it follows that documents concerning those amendments should be discovered. The Court was satisfied that there was sufficient similarity between some amendments to warrant additional discovery, in that the Court believed the amendments took the same effect. The relevant amendments were:

A recent Federal Court of Australia decision (Hanwha Solutions Corporation v LONGi Green Energy Technology Co. Ltd [2020] FCA 580) has provided some guidance regarding applications for post patent grant amendments and discovery. In this decision, the Court has largely dismissed an application for discovery filed by three companies, LONGi, Jinko and REC (the respondents ). This result is of particular interest as many recent Australian decisions have gone against patentees seeking to make amendment to a patent immediately prior to, or during, infringement litigation. BACKGROUND Hanwha had initially sued the respondents under the Patents Act 1990 (Cth) in part for infringement of claims 9, 11 and 12 of their Australian Patent 2008323025 (the Patent ) titled “Method for manufacturing a solar cell with a surface-

passivating dielectric double layer, and corresponding solar cell”. In response, the respondents filed cross claims that the contentious claims were invalid based on lack of novelty and inventive step (based on a prior published US patent application referred to in the decision as Bhattacharyya ), lack of support and utility. Thereafter, Hanwha filed an interlocutory application seeking leave to amend the Patent pursuant to section 105 of the Patents Act ( amendment application ). The respondents opposed the amendment application on grounds including, inter alia , that Hanwha delayed in seeking the amendments and failed to make full disclosure of all matters relevant to the proposed amendments. On 11 October 2019, the Federal Court ordered Hanwha to supply those documents relevant to the amendment application. The respondents were not satisfied with the provided discovery and further contended that all relevant documents must be provided. Therefore, the respondents filed interlocutory applications seeking orders, primarily that Hanwha discover and produce documents, unredacted, within certain listed categories.

PETER CAPORN Principal

PROPOSED AMENDMENTS TO CORRESPOND I NG EU PATENT

ELLEN CHA Technical Assistant

Claim 13: Solar cell according to any one of claims 9 to 12, wherein the second dielectric layer has a thickness of more than 100 nm and more preferably more than 150 nm.

1 Hanwha Solutions Corporation v LONGi Green Energy Technology Co. Ltd [2020] FCA 580 [19].

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