Inital SolarEdge Complaint Against Enphase

Case 3:17-cv-04047 Document 1 Filed 07/18/17 Page 1 of 13
1 DAVID R. EBERHART (S.B. #195474)

deberhart@omm.com
2 MELODY DRUMMOND HANSEN (S.B. #278786)
mdrummondhansen@omm.com
3 ALEXANDER B. PARKER (S.B. #264705)
aparker@omm.com
4 OMELVENY & MYERS LLP
Two Embarcadero Center
5 28 Floor
San Francisco, California 94111-3823
6 Telephone: +1 415 984 8700
Facsimile: +1 415 984 8701
7
Attorneys for Plaintiffs
8 SolarEdge Technologies Inc. and
SolarEdge Technologies Ltd.
9
10 UNITED STATES DISTRICT COURT
11 NORTHERN DISTRICT OF CALIFORNIA
12
13 SolarEdge Technologies Inc. and SolarEdge Case No.

Technologies Ltd.,
14 COMPLAINT FOR
Plaintiffs,
15 (1) Trademark Infringement (Lanham
v. Act 32, 15 U.S.C. 1114)
16
Enphase Energy, Inc., (2) False Advertising (Lanham Act
17 43(a), 15 U.S.C. 1125(a))
Defendant.
18 DEMAND FOR JURY TRIAL
19
20
21
22
23
24
25
26
27
28
COMPLAINT FOR TRADEMARK
INFRINGEMENT & FALSE ADVERTISING
1 Plaintiffs SolarEdge Technologies, Inc. and SolarEdge Technologies Ltd. (collectively,

2 SolarEdge) bring this action against defendant Enphase Energy, Inc. (Enphase) based on its
3 false and misleading advertising and its infringement of SolarEdges legally protected and
4 federally registered trademarks. SolarEdge seeks injunctive, compensatory, and punitive relief.
5 THE PARTIES
6 1. Plaintiff SolarEdge Technologies, Inc. (SolarEdge Inc.) is a Delaware
7 corporation with its principal place of business located at 1 HaMada Street, POB 12001, Postal
8 code 4673335, Herzliya, Israel.
9 2. Plaintiff SolarEdge Technologies Ltd. (SolarEdge Ltd.) is an Israeli Limited
10 Liability Company with its principal place of business located at 1 HaMada Street, POB 12001,
11 Postal code 4673335, Herzliya, Israel. SolarEdge Ltd. is a wholly owned subsidiary of SolarEdge
12 Inc.
13 3. On information and belief, defendant Enphase Energy Inc. is a Delaware
14 corporation with its principal place of business located at 1420 N. McDowell Boulevard,
15 Petaluma, CA 94954. Enphase is therefore a resident of this District.
16 JURISDICTIONAL STATEMENT
17 Jurisdiction
18 4. Subject-matter jurisdiction is proper because this is an action for violations of
19 rights granted under the Federal Trademark Act of 1946, 15 U.S.C. 1051 et seq. Specifically,
20 this action is based on Sections 32 and 43(a) of the Lanham Act, 15 U.S.C. 1114 and 1125(a).
21 This Court has jurisdiction over the subject matter of this action pursuant to Section 39 of the
22 Lanham Act, 15 U.S.C. 1116 and 1121, and 28 U.S.C. 1331 and 1338.
23 5. The Court has personal jurisdiction over Enphase because Enphase maintains its
24 principal place of business within this district. The Court also has personal jurisdiction over
25 Enphase because the acts that are the subject of this complaint were committed at least in part in
26 this District.
27 Venue
28 6. Venues is proper in this District under 28 U.S.C. 1391(a) because Enphase
-2- INFRINGEMENT & FALSE ADVERTISING
1 resides in this district and is subject to personal jurisdiction in this district. Venue is also proper in
2 this District under 28 U.S.C. 1391(b) because the acts that are the subject of this complaint were
3 committed at least in part in this District.
4 Intradistrict Assignment
5 7. Pursuant to Civil L.R. 3-2(c) and General Order No. 44, this case is properly
6 assigned to any division of this Court because it involves a claim for trademark infringement.
7 FACTUAL ALLEGATIONS
8 SolarEdge and Solar Power Systems
9 8. SolarEdge is in the business of researching, developing, manufacturing, and selling
10 electronic components for solar photovoltaic (PV) modules, which are often referred to as
11 solar panels.
12 9. PV modules are the panels, generally installed on rooftops, that absorb and convert
13 solar energy to direct electric current (DC). A device known as an inverter is necessary to
14 transform the electric current from DC to alternating current (AC), the type of power delivered
15 to residences and businesses through the power grid.
16 10. Most PV systems employ multiple solar panels and, historically, the PV industry
17 connected multiple panels to one or a small number of centralized inverters for the DC to AC
18 conversion.
19 11. Currently, SolarEdges primary products are components involved in the
20 optimization of energy generated from solar panels, monitoring and safety features related to this
21 optimization, and the conversion of the generated energy from DC to AC. SolarEdge makes and
22 sells devices called power optimizers. A power optimizer is used for each solar panel, and
23 multiple power optimizers are used in combination with a simplified centralized inverter. Because
24 a power optimizer is connected to each solar panel, power optimizers are considered panel-
25 level electronics.
26 12. The general practice of situating electronics at the solar-panel level is sufficiently
27 common that the industry has coined the acronym MLPE (module-level power electronics) to
28 refer to electronics situated at the solar-panel level of a PV system.
1 13. Since beginning commercial shipments in 2010, SolarEdge has grown to become a
2 global leader in the PV industry. SolarEdge has shipped approximately 4.7 gigawatts of its
3 inverter systems (more than 15 million power optimizers), the vast majority of which are installed
4 in the United States.
5 14. For at least five years, SolarEdge has used the stylized mark shown below (the
6 Stylized Mark) as its primary logo and brand identifier.
7
10
11 15. SolarEdge Ltd. owns U.S. Trademark Registration No. 4,409,186 for the Stylized
12 Mark. A copy of the Certificate of Registration for the Stylized Mark is attached as Exhibit 1.
13 16. SolarEdge Ltd. also owns U.S. Trademark Registration No. 3,966,641 for the
14 standard character mark SOLAREDGE (the SOLAREDGE Mark, and collectively with the
15 Stylized Mark, the SolarEdge Marks). A copy of the Certificate of Registration for the Stylized
16 Mark is attached as Exhibit 2.
17 17. SolarEdge Ltd. has granted to SolarEdge Inc. a license to use the SolarEdge
18 Marks, including within the United States.
19 18. Both trademark registrations are valid and protectable.
20 19. SolarEdge has invested significantly in building consumer recognition of its brand,
21 with sales and marketing costs for fiscal years 2014, 2015, and 2016 of $17.7 million, $24.9
22 million, and $34.8 million, respectively. As a result of SolarEdges longstanding investment in its
23 brand, the SolarEdge Marks are well-known and valuable trademarks, with widespread
24 marketplace recognition as designations of SolarEdge and its products.
25 Enphase
26 20. Defendant Enphase also sells PV inverter components and is a direct competitor to
27 SolarEdge.
28 21. Instead of a centralized inverter, Enphase uses microinverter technology, which

1 locates a small inverter at each solar panel.

2 22. Microinverters, like power optimizers, panel-level electronics, AKA MLPEs.
3 Embedded vs. Non-Embedded Electronics
4 23. A further development of MLPE technology is to embed either a power
5 optimizer or a microinverter into a solar panel before the panel leaves the factory of the panel
6 manufacturer. This embedding process reduces the time required to install a PV system at an end
7 users residential or commercial location, because it is no longer necessary to separately install a
8 power optimizer or microinverter for each solar panel in the system.
9 24. The process of embedding a panel-level component into a PV panel was first
10 introduced by SolarEdge to solar panel manufacturers in 2011. Embedded SolarEdge power
11 optimizers have been continuously available from solar panel manufacturers since at least as early
12 as 2012.
13 25. SolarEdges power optimizers continue to be available in standalone formin
14 other words, not embedded in a PV panel. In fact, SolarEdge is known primarily for its non-
15 embedded optimizers, as embedded technology is still not widely used in the PV industry.
16 26. Enphase has recently announced that one of its microinverters will now be
17 available in two forms as well: (1) separate from solar panels (requiring integration at installation
18 time), which is the way that Enphase had sold its products since its inception, and (2) embedded
19 into a solar panel by one of two panel manufacturers.
20 Enphases False And Misleading Advertising Campaign
21 27. Enphase recently launched a new advertising campaign using video, audio, and
22 text to promote a product called the Enphase AC Modulea solar panel with an embedded
23 Enphase microinverter. The video for the campaign, titled Enphase Energized AC Module vs.
24 String+Optimizers (the Time-Lapse Video), purports to depict a time-compressed video
25 comparison between the installation times for PV systems using comparable SolarEdge and
26 Enphase products. A true and correct copy of the Time-Lapse Video will be filed conventionally
27 as Exhibit 3. A transcript of the audio of the Time-Lapse Video is attached as Exhibit 4.
28 28. SolarEdges Stylized Mark is prominently shown throughout the purported
1 competition between the two PV system installations, with the captured frame below being an
2 example:
3
10
11 29. SolarEdge has not consented to Enphases use of the Stylized Mark in any
12 capacity, including within the Time-Lapse Video.
13 30. The video purports to show that the installation of a PV system using Enphases
14 recently announced embedded microinverter product takes half the time of a comparable
15 SolarEdge optimizer-based system. For example, the video is accompanied on Enphases website
16 with the text Stop wasting time installing optimizersWhen compared to optimizers, the
17 Enphase AC Module cuts rooftop installation time in half. See for yourself (emphasis added). In
18 other words, Enphase tells viewers that choosing a PV system that uses SolarEdges power
19 optimizers rather than the Enphase AC Module will necessarily double their installation time. A
20 true and correct copy of the webpage where the Time-Lapse Video is available on Enphases
21 website is attached as Exhibit 5.
22
23
24
25
26
27
28
1 31. In the Time-Lapse Video, the installer also provides commentary that states, in
2 part:
3 Do I see a time difference between the two systems? Absolutely,
yes. Yeah, its a plug and play. Its lay a panel down and go to the
4 next one, very fast installation. I like it. There is no comparison.
Youre skipping all these steps. The micro is already attached to the
5 panel. I dont have to worry about laying out optimizers or micros
on a rail, and obviously that phase doesnt have an inverter hanging
6 on the side of your wall. Thats one less thing. Thats what I like. It
was easy to manage. You didnt have to bring some PV wire out.
7 Its make a couple marks, lay these panels and go. I would most
definitely use the LG AC Module [with embedded Enphase
8 microinverter].
9 32. Finally, the video ends with the text: The Enphase Energized AC Module cuts
10 installation time in half.
11 33. The Time-Lapse Video presents a false and materially misleading comparison. A
12 fair comparison would test systems that both employ embedded products: Enphases embedded
13 microinverters and SolarEdges embedded power optimizers. The Time-Lapse Video, however,
14 unfairly compares Enphases embedded microinverters with SolarEdges non-embedded power
15 optimizers.
16 34. Enphases advertising campaign is thus literally false, because the test relied on
17 does not and cannot establish that a PV system using Enphases product installs twice as quickly
18 as optimizer-based PV systems as a class. A fair comparison of the installation time of a system
19 using Enphases embedded microinverters with that of a system using SolarEdges embedded
20 power optimizers would demonstrate that any time differential is substantially smaller (and it is
21 not obvious in whose favor that difference would be).
22 35. Consumers are likely to be deceived into incorrectly believing that a system using
23 Enphase microinverters inherently installs faster than a system using SolarEdge power
24 optimizers.
25 36. By presenting the Time-Lapse Video as a demonstration of the time-saving
26 advantages of Enphases embedded microinverters versus power optimizers generally, Enphases
27 advertising campaign also falsely and necessarily implies that SolarEdges power optimizers are
28 not available in embedded form.
1 37. The installers statement that the lack of a centralized inverter hanging on the side
2 of your wall is one less thing in the Enphase installation process is also misleading. The
3 Enphase system requires the installation of a separate box, called the Enphase Envoy, that is used
4 for monitoring the individual microinverters and communicating with Enphases servers.
5 38. Enphases advertising campaign is likely to influence purchasing decisions. While
6 there are a number of factors relevant to choosing a PV inverter system, with all other factors
7 equal, reducing the time of installation may reduce an installers costs, increase efficiency, and
8 increase profits. For the end user, a faster, simpler installation may be expected to translate into
9 savings on installation costs. Enphase has represented that this is the case on its website, stating
10 that using the Enphase AC Module mak[es] installations more cost-effective and faster and that
11 [t]his means a faster experience for [installers] and a greater savings for [their] customer[s].
12 39. Enphase has caused the false advertisement to enter interstate commerce by
13 publishing it in multiple locations: its own website, on Twitter, on YouTube, and on Facebook.
14 SolarEdge is informed and believes that Enphase likely also showed the false advertisement at the
15 Intersolar North America trade show, which took place in San Francisco from July 1013, 2017.
16 Enphase introduced its embedded product at Intersolar, and Enphase representatives engaged in
17 promotional activities at the trade show.
18 40. By claiming to prove that Enphases embedded microinverters are superior to
19 SolarEdges optimizers in ways that are likely to influence purchasing decisions, Enphases
20 campaign of false advertising is also likely to directly divert sales and customer interest from
21 SolarEdge to Enphase.
22 41. On July 12, 2017, SolarEdge sent to Enphase, through counsel, a letter requesting
23 that Enphase promptly cease and desist from disseminating the advertising campaign, because it
24 makes false claims and because it infringes SolarEdges Stylized Mark. A copy of that letter is
25 attached as Exhibit 6.
26 42. On July 14, 2017, Enphase responded to SolarEdge, through counsel, indicating
27 that Enphase would not stop disseminating the advertising campaign. A copy of that letter is
28 attached as Exhibit 7.
1 FIRST CAUSE OF ACTION

2 (Trademark Infringement of a Registered Mark Lanham Act 32, 15 U.S.C. 1114)
3 43. SolarEdge hereby incorporates by reference the above allegations of this complaint
4 as if set forth fully herein.
5 44. SolarEdge owns U.S. Trademark Registration No. 4,409,186 for the Stylized Mark
6 and U.S. Trademark Registration No. 3,966,641 for the SOLAREDGE Mark.
7 45. SolarEdge is presently using the SolarEdge Marks in commerce in the United
8 States in connection with the sale, offering for sale, distribution, and advertising of PV system
9 components.
10 46. SolarEdge has not consented to Enphases use of the Stylized Mark.
11 47. Enphases use of the Stylized Mark is likely to cause confusion, mistake, and
12 deception by creating the false and misleading impression that SolarEdge has sponsored,
13 endorsed, or approved the Time-Lapse Video, or that SolarEdge sponsored, endorsed, approved,
14 or participated in the optimizer-based installation shown in the Time-Lapse Video.
15 48. It is not necessary for Enphase to use the Stylized Mark to identify the product in
16 question. The title of the Time-Lapse Video (Enphase Energized AC Module vs.
17 String+Optimizers) and the accompanying text (When compared to optimizers, the Enphase
18 AC Module cuts rooftop installation time in half) suggest that Enphase intends to make a
19 comparison to power optimizers generallynot any brand of optimizer in particular.
20 49. The above-described acts and practices constitute trademark infringement of the
21 SolarEdge Marks in violation of Section 32 of the Lanham Act (15 U.S.C. 1114).
22 50. On information and belief, Enphases conduct was undertaken willfully in the first
23 instance. Enphase has refused to cease its infringing conduct following notice from SolarEdge,
24 and Enphases continued infringement is therefore willful.
25 51. SolarEdge has been or is likely to be injured by Enphases conduct. This injury
26 includes direct diversion of sales from SolarEdge to Enphase, injury to SolarEdges reputation,
27 and loss of goodwill associated with SolarEdges marks, brand, and products.
28 52. Unless Enphases infringing conduct is enjoined by this Court, the consuming
1 public will continue to be confused and SolarEdge will suffer a loss of consumer confidence,
2 sales, revenue, and goodwill, to the irreparable injury of SolarEdge.
3 53. SolarEdge has no adequate remedy at law and is therefore entitled to injunctive
4 relief pursuant to 15 U.S.C. 1116.
5 54. Pursuant to 15 U.S.C. 1117(a), SolarEdge is also entitled to recover (i)
6 Enphases profits, (ii) SolarEdges ascertainable damages, and (iii) SolarEdges costs of suit.
7 Furthermore, Enphases willful infringement of the Stylized Mark in connection with false
8 statements of fact about products sold by SolarEdge in connection with the Stylized Mark renders
9 this an exceptional case and entitles SolarEdge to its reasonable attorney fees.
10 SECOND CAUSE OF ACTION
11 (False Advertising Lanham Act 43(a), 15 U.S.C. 1125(a))
12 55. SolarEdge hereby incorporates by reference the above allegations to this complaint
13 as if set forth fully herein.
14 56. Enphase is making false, misleading, and deceptive representations of fact in its
15 advertising campaign for the Enphase AC Module.
16 57. Enphases campaign misrepresents the nature, characteristics, and qualities of
17 Enphases and SolarEdges products.
18 58. The above-described acts and practices constitute violations of Section 43(a) of the
19 Lanham Act (15 U.S.C. 1125(a)). On information and belief, Enphases conduct was
20 undertaken willfully. Enphase has refused to cease its conduct following notice from SolarEdge,
21 and Enphases continued conduct is therefore willful.
22 59. SolarEdge has been or is likely to be injured by Enphases conduct. This injury
23 includes direct diversion of sales from SolarEdge to Enphase, injury to SolarEdges reputation,
24 and loss of goodwill associated with SolarEdges marks, brand, and products.
25 60. Unless Enphase is enjoined by this Court from continuing to make false,
26 misleading and deceptive representations of fact in its advertising campaign, the consuming
27 public will continue to be confused and SolarEdge will suffer a loss of consumer confidence,
28 sales, revenue, and goodwill, to the irreparable injury of SolarEdge.
- 10 - INFRINGEMENT & FALSE ADVERTISING
1 61. SolarEdge has no adequate remedy at law and is therefore entitled to injunctive
2 relief pursuant to 15 U.S.C. 1116.
3 62. Pursuant to 15 U.S.C. 1117(a), SolarEdge is also entitled to recover (i)
4 Enphases profits, (ii) SolarEdges ascertainable damages, and (iii) SolarEdges costs of suit.
5 Furthermore, Enphases willful infringement of the Stylized Mark in connection with false
6 statements of fact about products sold by SolarEdge in connection with the Stylized Mark renders
7 this an exceptional case and entitles SolarEdge to its reasonable attorney fees.
8 PRAYER FOR RELIEF
9 SolarEdge respectfully requests that the Court:
10 A. Issue a temporary restraining order, and a preliminary and permanent injunction,
11 ordering that Enphase, its successors, affiliates, agents, officers, employees, consultants, and
12 representatives, and all others in active concert or participation with Enphase, refrain from
13 directly or indirectly using in commerce or causing to be published or otherwise disseminated any
14 promotional or advertising materials containing any use of SolarEdges Stylized Mark;
15 B. Issue a temporary restraining order, and a preliminary and permanent injunction,
16 ordering that Enphase, its successors, affiliates, agents, officers, employees, consultants, and
17 representatives, and all others in active concert or participation with Enphase, refrain from
18 directly or indirectly using in commerce or causing to be published or otherwise disseminated any
19 promotional or advertising materials containing any false or misleading facts about SolarEdge or
20 its products, including without limitation false and misleading comparisons between either
21 SolarEdges products and Enphases products or between power optimizer technology and
22 microinverter technology, and including without limitation the video titled Enphase Energized
23 AC Module vs. String+Optimizers and associated text and audio;
24 C. Award SolarEdge:
25 i. Enphases profits, gains, and advantages derived from Enphases unlawful
26 conduct;
27 ii. all damages sustained by SolarEdge by reason of Enphases unlawful
28 conduct, including all expenditures required to correct the false,
1 misleading, deceptive, and unfair statements by Enphase and the

2 misappropriation of SolarEdges Stylized Mark;
3 iii. additional compensation in such sum as the court shall find to be just
4 pursuant to 15 U.S.C. 1117;
5 iv. trebled damages pursuant to 15 U.S.C. 1117;
6 v. exemplary and punitive damages as the Court finds appropriate to punish
7 Enphases misconduct and deter any future willful conduct; and
8 vi. interest on the foregoing sums;
9 D. Award SolarEdge attorneys fees and costs and disbursements of this action; and
10 E. Grant such other and further relief as the Court deems just and proper.
11
12
13 Dated: July 18, 2017 OMELVENY & MYERS LLP

14
15 By: /s/ David R. Eberhart

DAVID R. EBERHART
16 Attorneys for Plaintiffs
SolarEdge Technologies Inc. and
17 SolarEdge Technologies Ltd.
18
19
20
21
22
23
24
25
26
27
28
1 JURY DEMAND
2 SolarEdge Technologies Inc. and SolarEdge Technologies Ltd. respectfully request a jury
trial on all issues triable thereby.
3
5 Dated: July 18, 2017 OMELVENY & MYERS LLP

6
7 By: /s/ David R. Eberhart

DAVID R. EBERHART
8 Attorneys for Plaintiffs
SolarEdge Technologies Inc. and
9 SolarEdge Technologies Ltd.
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

Inital SolarEdge Complaint Against Enphase

Încărcat de

Informații document

Drepturi de autor

Formate disponibile

Partajați acest document

Partajați sau inserați document

Opțiuni de partajare

Vi se pare util acest document?

Este necorespunzător acest conținut?

Drepturi de autor:

Formate disponibile

Inital SolarEdge Complaint Against Enphase

Încărcat de

Drepturi de autor:

Formate disponibile

Case 3:17-cv-04047 Document 1 Filed 07/18/17 Page 1 of 13

1 DAVID R. EBERHART (S.B. #195474)

10 UNITED STATES DISTRICT COURT

11 NORTHERN DISTRICT OF CALIFORNIA

13 SolarEdge Technologies Inc. and SolarEdge Case No.

1 Plaintiffs SolarEdge Technologies, Inc. and SolarEdge Technologies Ltd. (collectively,

16 Mark is attached as Exhibit 2.

18 Marks, including within the United States.

19 18. Both trademark registrations are valid and protectable.

24 marketplace recognition as designations of SolarEdge and its products.

28 21. Instead of a centralized inverter, Enphase uses microinverter technology, which

1 locates a small inverter at each solar panel.

12 capacity, including within the Time-Lapse Video.

21 website is attached as Exhibit 5.

1 FIRST CAUSE OF ACTION

1 misleading, deceptive, and unfair statements by Enphase and the

13 Dated: July 18, 2017 OMELVENY & MYERS LLP

15 By: /s/ David R. Eberhart

5 Dated: July 18, 2017 OMELVENY & MYERS LLP

7 By: /s/ David R. Eberhart

S-ar putea să vă placă și