DCT
4:25-cv-01533
Tesla Inc v. Matthews Intl Corp
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Tesla, Inc. (Texas)
- Defendant: Matthews International Corp. (Pennsylvania)
- Plaintiff’s Counsel: Tesla, Inc.
- Case Identification: Tesla, Inc. v. Matthews International Corp., 4:25-cv-01533, N.D. Cal., 03/11/2025
- Venue Allegations: Venue is based on Defendant's alleged business activities directed at California, including travel to the district, communications with Tesla in California, and supplying equipment to Tesla in Fremont, California.
- Core Dispute: Plaintiff seeks correction of inventorship for two U.S. patents related to dry battery electrode manufacturing, alleging its former employee was the true inventor, and alternatively claims breach of an oral contract to assign the patent rights.
- Technical Context: The technology concerns systems and methods for the solvent-free, "dry" manufacturing of battery electrodes, a process critical to improving performance and reducing costs for lithium-ion batteries used in electric vehicles and energy storage systems.
- Key Procedural History: The dispute arises from a long-standing commercial relationship between Plaintiff's predecessor, Maxwell Technologies, and a predecessor of Defendant, Saueressig GmbH. The complaint alleges that after a Maxwell employee, Dr. Porter Mitchell, disclosed his invention to Saueressig engineers, Defendant filed for patents on the invention while omitting Dr. Mitchell as an inventor. The complaint also alleges the existence of an oral agreement requiring Defendant to assign the resulting patent family to Plaintiff, which Defendant has allegedly breached.
Case Timeline
| Date | Event |
|---|---|
| 2018-10-23 | Dr. Mitchell allegedly emails invention concept to Saueressig |
| 2019-01-16 | Earliest Priority Date (Provisional 62/793,333 filed) |
| 2019-05-16 | Tesla completes acquisition of Maxwell Technologies |
| 2024-11-05 | U.S. Patent No. 12,136,727 issues |
| 2025-02-25 | U.S. Patent No. 12,237,494 issues |
| 2025-03-11 | Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 12,136,727 - "Systems for Manufacturing a Dry Electrode"
- Patent Identification: U.S. Patent No. 12,136,727, "Systems for Manufacturing a Dry Electrode", issued November 5, 2024.
The Invention Explained
- Problem Addressed: The patent describes that traditional methods for creating battery electrodes often involve complex, multi-step "wet" processes that use liquid solvents. These processes can be costly and have a large factory footprint, leaving "room for improvement" (’727 Patent, col. 4:1-4).
- The Patented Solution: The invention is a system that manufactures a dry electrode film directly from raw powder materials using a series of "multi roll calendars." This system forms a non-self-supporting film that is continuously supported by the rollers before being simultaneously laminated onto both sides of a current collector, streamlining the manufacturing process. (’727 Patent, Abstract; col. 8:3-10). The patent highlights that this continuous process, from raw material to a laminated electrode, can be accomplished without intermediate rewind/unwind steps, a key efficiency gain. (’727 Patent, col. 4:50-61).
- Technical Importance: This technology aims to simplify and reduce the cost of electrode manufacturing, a critical bottleneck in scaling up battery production for electric vehicles and other applications. (Compl. ¶12).
Key Claims at a Glance
- The complaint focuses on independent claim 1. (Compl. ¶24).
- Essential elements of Claim 1 include:
- A first multi roll calendar with a first series of horizontally aligned rolls (first, second, third, and final roll).
- A second multi roll calendar with a second series of horizontally aligned rolls (first, second, third, and final roll).
- The rolls are configured to form nips that first create a film from powder, then compress (calender) the film.
- The two calendars are horizontally aligned so their final rolls form a lamination nip to simultaneously laminate the two films onto a current collector.
- A current collector unwind station and a rewind station for the final product.
- The complaint notes that dependent claims add concepts that were either known in the art or also conceived by Dr. Mitchell. (Compl. ¶26).
U.S. Patent No. 12,237,494 - "Systems for Manufacturing a Dry Electrode"
- Patent Identification: U.S. Patent No. 12,237,494, "Systems for Manufacturing a Dry Electrode", issued February 25, 2025.
The Invention Explained
- Problem Addressed: As a continuation with a shared specification, the ’494 Patent addresses the same problem of improving the efficiency and cost of electrode manufacturing. (’494 Patent, col. 4:1-4).
- The Patented Solution: The solution is substantively the same as described in the ’727 patent: a continuous, dry process using multi-roll calendars to form and laminate electrode films. (’494 Patent, Abstract; col. 4:50-61). The core inventive concept of a continuous, supported dry film process is consistent across both patents.
- Technical Importance: As with the '727 Patent, this technology is directed at making battery production more efficient and scalable. (Compl. ¶27).
Key Claims at a Glance
- The complaint focuses on independent claim 1. (Compl. ¶29).
- Essential elements of Claim 1 include:
- A first multi roll calendar with a first series of horizontally aligned rolls (first, second, and third roll).
- A second multi roll calendar with a second series of horizontally aligned rolls (first, second, and third roll).
- The rolls are configured to form nips to create a film from powder and then compress it.
- A lamination station to simultaneously laminate the films onto a current collector.
- A current collector unwind station and a rewind station.
- The complaint alleges Dr. Mitchell is the sole inventor of all claims. (Compl. ¶32).
III. Analysis of Conception Allegations
This action concerns correction of inventorship under 35 U.S.C. § 256, not patent infringement. The central factual allegation is that Tesla's former employee, Dr. Porter Mitchell, conceived of the claimed inventions and that Defendant improperly filed the patents-in-suit omitting him as an inventor. The primary evidence of conception cited in the complaint is a drawing Dr. Mitchell allegedly created and emailed to Defendant's engineers on October 23, 2018. (Compl. ¶15). The complaint includes a reproduction of this drawing, which depicts two sets of calendering rollers processing films that are then laminated onto a central current collector. (Compl. p. 4).
'727 Patent Conception Allegations
| Claim Element (from Independent Claim 1) | Alleged Conception by Dr. Mitchell | Complaint Citation |
|---|---|---|
| a first multi roll calendar comprising a first series of horizontally aligned rolls that include a first roll, a second roll, a third roll, and a final roll | The complaint alleges that Dr. Mitchell's October 2018 drawing shows a system with "two sets of four horizontally aligned rolls." | ¶24 |
| the first and second rolls of the first series of rolls form a first film creation nip configured to receive first powder and compress the first powder into a first film | The complaint alleges that the drawing "clearly set forth this concept" of creating a film from powder, as indicated by triangles shown above the nips in the drawing. | ¶25 |
| the second and third rolls of the series of rolls form a first calendaring nip configured to receive the first film and compress the first film into a compressed first film | This concept is alleged to be illustrated in the October 2018 drawing. | ¶25, p. 5 |
| the first multi roll calendar and the second multi roll calendar are horizontally aligned such that the final roll of the first series of rolls and the final roll of the second series of rolls forms a lamination nip | The complaint asserts that Dr. Mitchell conceived of this alignment and lamination, as evidenced by his October 2018 email, which "illustrates the concept and discusses the need for lamination." | ¶25, p. 6 |
| a rewind station that winds the laminated current collector from the lamination nip onto a roll | The complaint contends that Dr. Mitchell's October 2018 email demonstrates this "novel contribution." | ¶25, p. 6 |
'494 Patent Conception Allegations
| Claim Element (from Independent Claim 1) | Alleged Conception by Dr. Mitchell | Complaint Citation |
|---|---|---|
| a first multi roll calendar comprising a first series of horizontally aligned rolls that include a first roll, a second roll, and a third roll | The complaint alleges that the October 2018 drawing "illustrates his conception of a system with two multi roll calenders comprising three horizontally aligned rolls each." | ¶29 |
| configured to compress powder into a first film in a first nip formed by the first roll and the second roll... and compress the first film... in a second nip formed by the second roll and the third roll | The complaint states that Dr. Mitchell "clearly set forth this concept in his October 23, 2018 email as seen by the triangles above particular nips." | ¶30 |
| a lamination station configured to simultaneously laminate the first film onto a first side of a current collector and the second film onto a second side of the current collector | The complaint alleges this was conceived by Dr. Mitchell and evidenced by his email, which "illustrates the concept and discusses the need for lamination." | ¶31 |
| a current collector unwind station... and a rewind station... | The complaint states that Dr. Mitchell "illustrated his conception of this in his October 23, 2018 email, which depicts current collector being unwound from one roll and onto another after lamination occurs." | ¶31 |
- Identified Points of Contention:
- Completeness of Conception: A primary question for the court will be whether the 2018 drawing and email constitute a "definite and permanent idea of the complete and operative invention" as claimed. The dispute may focus on whether the named inventors from Saueressig contributed inventive concepts necessary to reduce the idea to practice or to arrive at the specific configurations defined in the claims, which could make them joint inventors.
- Evidentiary Sufficiency: The case will depend on the strength of the evidence corroborating Dr. Mitchell's alleged conception. The court will examine the content of the October 2018 email, the drawing, and testimony regarding the communications between the parties to determine if Dr. Mitchell conceived of the claimed subject matter.
IV. Key Claim Terms for Construction
While claim construction is paramount in infringement cases, in an inventorship dispute it defines the metes and bounds of what was allegedly conceived.
- The Term: "multi roll calendar"
- Context and Importance: This term appears in the preamble of the independent claims of both patents and defines the core component of the invention. Practitioners may focus on this term because the central dispute is whether Dr. Mitchell's 2018 drawing depicts the complete "multi roll calendar" as claimed, or merely a high-level concept that required further inventive contributions from others to become the claimed system. The scope of this term will dictate how much detail Dr. Mitchell must have conceived of to be considered an inventor.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The specification describes the general concept of using multiple rolls in sequence to form a film, stating the number of nips can be "from two (three rolls) to six (seven rolls) or more." (’727 Patent, col. 4:63-65). This language suggests some flexibility in the specific structure.
- Evidence for a Narrower Interpretation: The claims themselves recite a specific series of rolls with distinct functions (e.g., a "film creation nip" followed by a "calendaring nip"). (’727 Patent, col. 11:26-32). This may support an interpretation that a "multi roll calendar" is not just any series of rolls, but one with this specific functional arrangement, which must have been part of the conception.
V. Other Allegations
The complaint includes several non-patent counts pled in the alternative to the inventorship claim.
- Breach of Contract: Tesla alleges that in or around 2019, its predecessor Maxwell and Matthews entered into an oral "Maxwell Agreement." (Compl. ¶38). Under this alleged agreement, Matthews was obligated to assign the rights to the provisional application and all related patents to Maxwell (and later Tesla) in consideration of the ongoing business relationship and equipment payments. (Compl. ¶¶38-39). The complaint alleges Matthews acknowledged this agreement on multiple occasions before indicating in November 2024 that it would not honor it. (Compl. ¶¶40-44).
- Promissory Estoppel and Quasi-Contract/Restitution: In the alternative, Tesla claims it detrimentally relied on Matthews's promises to assign the patent rights by continuing its business relationship and making substantial payments for equipment from 2019 onward. (Compl. ¶¶67-68). Tesla further alleges that Matthews has been unjustly enriched by obtaining and benefiting from patents on inventions rightfully owned by Tesla. (Compl. ¶73).
VI. Analyst’s Conclusion: Key Questions for the Case
The resolution of this case will likely depend on the court’s findings regarding two central issues: one of patent law and one of contract law.
- A core issue will be one of inventorship and conception: Does the evidence, principally the 2018 email and drawing, demonstrate that Dr. Mitchell conceived of the complete and operative invention as recited in the patent claims? The case will test whether his contribution was sufficient to establish sole inventorship or, at minimum, joint inventorship, versus being a non-inventive contribution to an invention finalized by others.
- A second key question will be one of contractual obligation: Did the parties form an enforceable oral agreement that required Matthews to assign the patent family to Tesla? The court will need to assess evidence of the agreement's formation, its specific terms, and the parties' subsequent conduct to determine if a binding and breached contract existed.