DCT
1:18-cv-00849
Cap XX Ltd v. Ioxus Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Cap XX Ltd (Australia)
- Defendant: Ioxus Inc (Delaware)
- Plaintiff’s Counsel: Potter Anderson & Corroon LLP; Adams Reese LLP
- Case Identification: 1:18-cv-00849, D. Del., 06/05/2018
- Venue Allegations: Venue is alleged to be proper in the District of Delaware because Defendant Ioxus, Inc. is a Delaware corporation and therefore resides in the district.
- Core Dispute: Plaintiff alleges that Defendant’s supercapacitor products infringe two patents related to the structure and performance characteristics of charge storage devices.
- Technical Context: The technology relates to supercapacitors (also known as ultracapacitors), which are high-capacity energy storage devices used in applications requiring rapid charge and discharge cycles, such as in consumer electronics, automotive systems, and industrial equipment.
- Key Procedural History: The complaint alleges that Plaintiff provided Defendant with actual notice of the Patents-in-Suit on or about September 12, 2017, and offered a license, which Defendant refused. This event forms the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 1998-12-05 | Priority Date for ’034 and ’600 Patents |
| 2005-07-19 | U.S. Patent No. 6,920,034 Issued |
| 2008-06-03 | U.S. Patent No. 7,382,600 Issued |
| 2017-09-12 | Plaintiff provides Defendant with notice of patents-in-suit |
| 2018-06-05 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 6,920,034 - "Charge Storage Device," issued July 19, 2005
The Invention Explained
- Problem Addressed: The patent describes a challenge in the field of supercapacitors, where prior art devices were often optimized for either high power or high energy density, but not both. Specifically, devices with high energy density often suffered from high internal resistance, making them unsuitable for high-power, pulsed applications like engine starting or pulsed communications systems (’034 Patent, col. 1:36-54).
- The Patented Solution: The invention describes a supercapacitor designed to overcome this trade-off by achieving specific performance metrics, referred to as a "Figure of Merit" (FOM). The FOM characterizes the device's suitability for pulse power applications by relating its energy delivery capability to its response time (’034 Patent, col. 16:42-59). The patent claims devices that meet specific volumetric or gravimetric FOM thresholds, achieved through particular electrode constructions and materials (’034 Patent, Abstract; col. 2:4-21).
- Technical Importance: This approach sought to make supercapacitors viable for a wider range of high-power applications that were previously impractical due to performance limitations of existing devices (’034 Patent, col. 1:40-44).
Key Claims at a Glance
- The complaint asserts independent claims 1, 13, and 51 (Compl. ¶¶ 17, 18, 21).
- Independent Claim 1: A charge storage device comprising a cell (first electrode, second electrode, porous separator), a sealed package, and at least two terminals, characterized by:
- a volumetric FOM greater than about 3.2 Watts/cm³
- a maximum operating voltage less than about 4 Volts
- Independent Claim 13: A charge storage device with a similar structure, characterized by:
- first and second electrodes each having a layer of carbon with a surface area greater than 400 m²/gram
- an organic electrolyte
- a volumetric FOM greater than about 1.1 Watts/cm³
- a maximum operating voltage less than about 4 Volts
- Independent Claim 51: A charge storage device with a similar structure, characterized by:
- a gravimetric FOM greater than about 2.1 Watts/gram
- a maximum operating voltage less than about 4 Volts
U.S. Patent No. 7,382,600 - "Charge Storage Device," issued June 3, 2008
The Invention Explained
- Problem Addressed: As a continuation of the application leading to the ’034 Patent, this patent addresses the same technical problem: the unsuitability of prior art supercapacitors for high-power pulsed applications due to high internal resistance (’600 Patent, col. 1:41-col. 2:4).
- The Patented Solution: The invention claims a supercapacitor that provides a solution by achieving a high gravimetric Figure of Merit (FOM), indicating superior performance in high-power applications (’600 Patent, Abstract). The claims focus on a device architecture comprising specific electrode, separator, and packaging elements that collectively meet a defined performance threshold (’600 Patent, col. 2:13-28).
- Technical Importance: The technology aimed to improve the power delivery characteristics of supercapacitors, thereby expanding their applicability to demanding fields that require rapid energy transfer (’600 Patent, col. 1:41-49).
Key Claims at a Glance
- The complaint asserts independent claim 1 (Compl. ¶ 29).
- Independent Claim 1: A charge storage device comprising a first electrode, a second electrode, a porous separator, a sealed package with an electrolyte, and first and second terminals connected to their respective electrodes, characterized by:
- a gravimetric FOM greater than about 2.1 Watts/gram
III. The Accused Instrumentality
- Product Identification: The complaint specifically identifies Ioxus part numbers iRB3000K270CT and RSC2R7308LR as accused products (Compl. ¶¶ 19, 22, 30). It also accuses broader product lines, including the Ioxus X-Series® and uSTART® modules and systems, and provides a lengthy, non-exhaustive list of other potentially infringing Ioxus product models (Compl. ¶¶ 19, 20, 23, 31).
- Functionality and Market Context: The accused products are identified as supercapacitors, which are charge storage devices (Compl. ¶¶ 19, 30). The complaint alleges these products are sold as standalone components or as part of larger modules and systems (Compl. ¶¶ 19, 22). The functionality centers on storing and delivering electrical charge.
- No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
The complaint’s infringement allegations for the performance-based limitations (e.g., FOM, surface area) are made "on information and belief" (Compl. ¶¶ 19, 22, 30).
- ’034 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A charge storage device comprising: a charge storage cell including: (a) a first electrode; (b) a second electrode...; and (c) a porous separator... | Each accused Ioxus Inc product is alleged to be a charge storage device with a storage cell comprised of at least two electrodes and a porous separator between them. | ¶19 | col. 31:27-33 |
| a sealed package for containing the cell and an electrolyte in which the cell is immersed; | The storage cell is allegedly contained within a sealed package containing an electrolyte. | ¶19 | col. 31:34-35 |
| at least two terminals extending from the package to allow external electrical connection to the cell, | The package allegedly has two terminals extending from it to provide for an electrical connection. | ¶19 | col. 31:36-38 |
| wherein the volumetric FOM (Figure of Merit) of the device is greater than about 3.2 Watts/cm³ | On information and belief, the volumetric FOM of each accused device is alleged to be greater than 3.2 Watts/cm³. | ¶19 | col. 31:38-40 |
| and the maximum operating voltage of the cell is less than about 4 Volts. | Each accused device allegedly has a maximum operating voltage of less than 4 Volts. | ¶19 | col. 31:40 |
Identified Points of Contention:
- Technical Question: A central dispute will likely be whether the accused Ioxus products actually meet the quantitative performance limitations recited in the claims. The complaint alleges the required volumetric FOM, gravimetric FOM, and carbon surface area values "on information and belief" (Compl. ¶¶ 19, 22), which suggests the plaintiff may not have pre-suit test data or is choosing not to plead it. The case may turn on the results of product testing conducted during discovery.
- Scope Question: The use of the word "about" in claims 1, 13, and 51 (e.g., "about 3.2 Watts/cm³") introduces indefiniteness. The court will need to determine the scope of this term, which will be critical in deciding whether a product with a measured FOM close to, but not strictly exceeding, the recited value infringes.
’600 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| A charge storage device comprising: a first electrode; a second electrode...; a porous separator... | The accused products are alleged to be charge storage devices with at least two electrodes and a porous separator. | ¶30 | col. 31:2-5 |
| a sealed package for containing the electrodes, the separator and an electrolyte in which the electrodes are immersed; | The device components are allegedly contained in a sealed package with an electrolyte. | ¶30 | col. 31:6-8 |
| a first terminal and a second terminal being electrically connected to the first electrode and the second electrode respectively and both extending from the package... | The package allegedly has two terminals extending therefrom, providing for an electrical connection to the cell. | ¶30 | col. 31:9-13 |
| wherein the gravimetric FOM of the device is greater than about 2.1 Watts/gram. | On information and belief, the gravimetric FOM of the accused device is alleged to be greater than 2.1 Watts/gram. | ¶30 | col. 31:13-15 |
- Identified Points of Contention:
- Technical Question: As with the ’034 patent, the key factual question is whether the accused products meet the claimed "gravimetric FOM" of greater than "about 2.1 Watts/gram." This is pleaded "on information and belief" and will require evidentiary support (Compl. ¶ 30).
- Scope Question: The construction of "about 2.1 Watts/gram" will be a central legal issue for the same reasons described for the ’034 patent.
V. Key Claim Terms for Construction
- The Term: "volumetric FOM (Figure of Merit)" and "gravimetric FOM"
- Context and Importance: These terms are the primary technical limitations that distinguish the claimed inventions from the prior art. The entire infringement analysis for claims 1 and 51 of the ’034 patent and claim 1 of the ’600 patent hinges on whether the accused products meet these specific, numerically-defined performance thresholds. Practitioners may focus on these terms because the complaint pleads infringement of these limitations "on information and belief," signaling a likely evidentiary battle.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents repeatedly state an object is to provide a "useful alternative" to the prior art, which could support an interpretation broad enough to cover various methods of achieving high performance (’034 Patent, col. 2:7-8). The claims use the word "about," which inherently suggests the numerical values are not rigid, absolute limits.
- Evidence for a Narrower Interpretation: The specification provides a detailed, multi-step mathematical formula for calculating the FOM based on frequency response, impedance, and rated voltage (’034 Patent, col. 16:42-59). A party could argue that this specific methodology is definitional and any other method of measuring performance is outside the claim scope. The numerous specific examples with calculated FOM values (e.g., ’034 Patent, FIG. 17) could be used to argue the inventors had a very specific and limited performance range in mind.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant "encouraged others to infringe" (Compl. ¶ 12). It also alleges the sale of supercapacitor products that may be incorporated as components into larger systems, such as the "Ioxus X-Series® or uSTART® modules and systems" (Compl. ¶ 19), which may raise questions of contributory infringement if those components are not staple articles of commerce and have no substantial non-infringing use.
- Willful Infringement: Willfulness is alleged based on Defendant’s continued infringing activities after receiving actual notice of the Patents-in-Suit on or about September 12, 2017 (Compl. ¶¶ 11, 13). This alleges post-suit knowledge and a deliberate disregard of Plaintiff's patent rights.
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this dispute will likely depend on the answers to two central questions:
- A core question will be one of evidentiary proof: Can the Plaintiff, through discovery and expert testing, produce evidence demonstrating that the accused Ioxus supercapacitors meet the specific, quantitative performance metrics (e.g., "volumetric FOM greater than about 3.2 Watts/cm³") required by the patent claims, which are currently asserted only "on information and belief"?
- A second key issue will be one of claim scope: How will the court construe the term "about" when applied to the numerical limitations in the claims? The degree of variance permitted by this term could determine whether the measured performance of the accused products falls inside or outside the scope of the patents.