DCT

1:22-cv-01130

Molecular Rebar Design LLC v. LG Chem Ltd

Log In

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:22-cv-01130, D. Del., 08/29/2022
  • Venue Allegations: Venue is alleged to be proper as the foreign defendants are subject to suit in any judicial district, and all defendants have allegedly committed acts of infringement and purposefully transacted business in the United States and the State of Delaware, including through the incorporation of subsidiaries.
  • Core Dispute: Plaintiffs allege that Defendants’ lithium-ion batteries, which incorporate carbon nanotubes in their electrodes, infringe three U.S. patents directed to compositions and energy storage devices using discrete and exfoliated carbon nanotubes.
  • Technical Context: The technology concerns methods for overcoming the natural tendency of carbon nanotubes (CNTs) to clump together, thereby enabling their use as high-performance additives in materials for energy storage devices.
  • Key Procedural History: The complaint references prior litigation involving LG entities in the District of Delaware to support allegations of extensive and continuous business activities within the United States, but no procedural history related to the Asserted Patents is mentioned.

Case Timeline

Date Event
2009-12-18 Priority Date for U.S. Patent No. 8,475,961
2010-12-14 Priority Date for U.S. Patent No. 9,636,649
2012-06-21 Priority Date for U.S. Patent No. 10,608,282
2013-07-02 Issue Date for U.S. Patent No. 8475961
2017-05-02 Issue Date for U.S. Patent No. 9636649
2020-03-31 Issue Date for U.S. Patent No. 10608282
2022-08-29 Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 8,475,961 - "HIGH PERFORMANCE ENERGY STORAGE AND COLLECTION DEVICES CONTAINING EXFOLIATED MICROTUBULES AND SPATIALLY CONTROLLED ATTACHED NANOSCALE PARTICLES AND LAYERS", issued July 2, 2013

The Invention Explained

  • Problem Addressed: The patent's background section and the complaint note that while carbon nanotubes (CNTs) possess properties ideal for energy storage, their practical use is limited by the difficulty of separating them from their naturally occurring "bundled" or aggregated state into an "individually dispersed state" (’961 Patent, col. 2:21-34; Compl. ¶3). This clumping prevents access to the full surface area of the individual nanotubes, limiting performance.
  • The Patented Solution: The invention is an energy storage device, such as a battery, with an electrode containing "exfoliated" (i.e., de-bundled) nanotubes that have "attached" electroactive nanoscale particles or layers ('961 Patent, Abstract). By attaching the active materials directly to the individual, high-surface-area nanotubes, the invention aims to create a more efficient and stable electrode structure, improving charge transfer and mitigating issues like particle migration or cracking ('961 Patent, col. 6:8-20).
  • Technical Importance: This approach seeks to create higher-capacity, more durable, and safer lithium-ion batteries by engineering the electrode at the nanoscale to maximize the beneficial properties of both the CNTs and the active materials ('961 Patent, col. 2:3-8).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶41).
  • The essential elements of claim 1 are:
    • An energy storage and collection device comprising:
    • a) at least two electrodes;
    • b) at least one of the electrodes containing carbon or mineral nanotubes that have been exfoliated from their as-synthesized state and have attached electroactive or photo active nanoscale particles or layers;
    • c) at least two current collectors, each in contact with an electrode, or the electrode also functions as the current collector; and
    • d) optionally an insulator.
  • The complaint makes a general reservation of the right to assert additional claims as discovery progresses (Compl. ¶39).

U.S. Patent No. 9,636,649 - "DISPERSIONS COMPRISING DISCRETE CARBON NANOTUBE FIBERS", issued May 2, 2017

The Invention Explained

  • Problem Addressed: The patent background describes the challenge of creating polymer composites with CNTs, as the tubes are difficult to disperse individually and uniformly, which is necessary to achieve significant reinforcement (’649 Patent, col. 1:30-44).
  • The Patented Solution: The invention relates to a "dispersion" that contains "oxidized, discrete carbon nanotubes" along with an additive, such as an elastomer ('649 Patent, Abstract; Compl. ¶28). The patent describes creating a concentrate of these discrete CNTs, which can then be diluted into other materials to form composites with enhanced properties (Compl. ¶28). The oxidation of the CNTs facilitates their separation and dispersion in a liquid medium ('649 Patent, col. 5:8-13).
  • Technical Importance: The invention provides a practical method for incorporating individualized CNTs into commercial materials like elastomers, enabling the creation of high-performance composites for applications such as tires, seals, and battery components (Compl. ¶28; '649 Patent, col. 4:35-41).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶63).
  • The essential elements of claim 1, as recited in the complaint, are:
    • A dispersion comprising a plurality of oxidized, discrete carbon nanotubes and at least one additive,
    • wherein the oxidized, discrete carbon nanotubes have an aspect ratio of 25 to 500,
    • are multiwall, and
    • are present in the range of greater than zero to about 30% by weight based on the total weight of the dispersion.
  • The complaint makes a general reservation of the right to assert additional claims (Compl. ¶39).

U.S. Patent No. 10,608,282 - "BINDERS, ELECTROLYTES AND SEPARATOR FILMS FOR ENERGY STORAGE AND COLLECTION DEVICES USING DISCRETE CARBON NANOTUBES", issued March 31, 2020

Technology Synopsis

  • This patent describes compositions for use as binders, electrolytes, or separator films in energy storage devices, where the compositions include "discrete carbon nanotube fibers" (’282 Patent, Abstract; Compl. ¶30). The invention claims that using discrete, and particularly open-ended, CNTs with specific aspect ratio distributions can improve key battery performance metrics like capacity, power, durability, and ion transport ('282 Patent, col. 4:42-56; Compl. ¶30).

Asserted Claims

  • Independent claim 1 (Compl. ¶80).

Accused Features

  • The complaint alleges that the CNTs in the accused products function as a binder, "covering the surfaces of the active materials and binding the particles together in crevices" (Compl. ¶93).

III. The Accused Instrumentality

Product Identification

The accused instrumentalities are Defendants' HG2, HG6, and MJ1 model lithium-ion batteries ("Accused Products") (Compl. ¶32).

Functionality and Market Context

The Accused Products are cylindrical lithium-ion battery cells (Compl. ¶¶ 54-55). The complaint alleges these cells are incorporated into downstream products such as electric vehicles (EVs) and other consumer electronics sold in the United States (Compl. ¶¶ 42-43). Plaintiffs allege that Defendants, through facilities in Michigan, supply millions of these battery cells annually to major U.S. automotive manufacturers, including General Motors and Chrysler, for the U.S. EV market (Compl. ¶¶ 48, 70). The complaint includes a photograph of the internal components of an LG HG2 battery, showing a rolled-up assembly of a cathode, an anode, and a separator (Compl. p. 13).

IV. Analysis of Infringement Allegations

’961 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
An energy storage and collection device Each of the Accused Products is alleged to be an energy storage and collection device in the form of a lithium-ion battery. ¶54 col. 7:1-2
a) at least two electrodes; The Accused Products allegedly have a cathode (active materials on an aluminum current collector) and an anode (active materials on a copper current collector). ¶55 col. 7:3
b) at least one of the electrodes containing carbon or mineral nanotubes that have been exfoliated from their as-synthesized state The complaint alleges, based on Scanning Electron Microscope (SEM) images, that at least one electrode in each Accused Product contains CNTs. It further alleges these CNTs have been "exfoliated (de-aggregated, separated, individualized)" based on SEM images showing individual tubes. ¶¶56-57 col. 7:4-7
and have attached electroactive or photo active nanoscale particles or layers; The complaint alleges, based on SEM images with circled regions, that the CNTs have "attached electroactive or photo active nanoscale particles or layers." The teardown photo of the LG HG2 battery shows the electrode material on the current collector (Compl. p. 19). ¶58 col. 7:7-8
c) at least two current collectors...; and The Accused Products allegedly have at least two current collectors, identified as the copper (anode) and aluminum (cathode) foils. ¶59 col. 7:9-11
d) optionally an insulator. The Accused Products allegedly have an insulator, identified as the white wrapping that physically separates the anode and cathode electrodes. ¶61 col. 7:11
  • Identified Points of Contention:
    • Scope Questions: A central issue will be the construction of "attached." The patent suggests this requires "at least one electrostatic or covalent bonding site" ('961 Patent, col. 6:60-62). The dispute will likely focus on whether the mere physical admixture of CNTs and active particles in a dried slurry, as may be present in the accused batteries, satisfies this limitation, or if a specific chemical or electrostatic bond must be proven.
    • Technical Questions: The infringement case for the "exfoliated" and "attached" limitations relies heavily on the interpretation of SEM images provided in the complaint (Compl. pp. 15-19). A key technical question will be what evidence, beyond visual interpretation of these images, exists to prove the specific state and spatial relationship of the CNTs and particles as required by the claims.

’649 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
A dispersion comprising a plurality of oxidized, discrete carbon nanotubes The complaint alleges the Accused Products "contain" a plurality of such nanotubes, as reflected in SEM images (Compl. p. 23). The infringement theory appears to be that the cathode is a dried form of such a dispersion. ¶76 Compl. ¶74
and at least one additive, The "additive" is alleged to be the cathode's active material itself, which is in composition with the nanotubes. ¶77 Compl. ¶74
wherein the oxidized, discrete carbon nanotubes have an aspect ratio of 25 to 500, are multiwall, This is alleged to be met based on SEM imagery. ¶77 Compl. ¶74
and are present in the range of greater than zero to about 30% by weight... The complaint alleges, on information and belief, that the nanotubes are present in an amount of less than 10% of the cathode, which falls within the claimed range. ¶78 Compl. ¶74
  • Identified Points of Contention:
    • Scope Questions: The most significant issue for the ’649 patent is a potential discrepancy between the claim language quoted in the complaint ("at least one additive") (Compl. ¶74) and the language in the issued patent, which may be more specific. Resolution of the correct claim language will be a threshold issue. Furthermore, the term "dispersion" typically refers to particles suspended in a fluid medium. A key question is whether this term can be construed to read on a final, solid-state battery electrode, or if infringement requires proving the use of an infringing liquid dispersion during manufacturing.
    • Technical Questions: As with the '961 patent, infringement allegations rely on SEM images. A technical question will be whether these images are sufficient to establish the claimed properties (e.g., that the CNTs are "oxidized" and meet the specific "aspect ratio" ranges) or if more direct chemical and physical analysis is required.

V. Key Claim Terms for Construction

  • The Term: "exfoliated from their as-synthesized state" ('961 Patent, Claim 1)

    • Context and Importance: This term is central to distinguishing the invention from prior art that used bundled or aggregated CNTs. The definition will determine the required degree of nanotube separation. Practitioners may focus on this term because the patent's own background criticizes prior art for failing to "completely debundle" CNTs.
    • Intrinsic Evidence for a Broader Interpretation: The patent equates "exfoliated state" with an "individually dispersed state" ('961 Patent, col. 2:32-34), which might be argued to cover any state where a significant portion of nanotubes are separated, not necessarily all of them.
    • Intrinsic Evidence for a Narrower Interpretation: The patent's abstract refers to electrode materials "containing exfoliated nanotubes," and the background emphasizes the goal is to "completely debundle nanotube aggregates" ('961 Patent, col. 2:30-32). This could support an interpretation requiring a substantially complete and stable separation of individual nanotubes.

  • The Term: "attached" ('961 Patent, Claim 1)

    • Context and Importance: The infringement analysis hinges on whether the nanoscale active particles are merely mixed with the CNTs or "attached" in a specific manner. This term defines the core structural relationship of the claimed electrode.
    • Intrinsic Evidence for a Broader Interpretation: The patent describes attachment occurring through "association" with other compounds (e.g., LiCO3) and through "in-situ synthesis" ('961 Patent, col. 6:3-8), which could be argued to encompass various forms of physical and chemical interaction, not just a formal covalent bond.
    • Intrinsic Evidence for a Narrower Interpretation: The specification explicitly states that "Attachment of nanoscale particles or layers means that the nanoscale particle or layer is held next to the nanotube by at least one electrostatic or covalent bonding site" ('961 Patent, col. 6:60-62). This provides strong evidence for a narrower construction requiring proof of a specific type of chemical or electrostatic bond.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges inducement of infringement by asserting that Defendants instruct and encourage third parties, such as automobile manufacturers, to use the Accused Products in infringing downstream systems like EVs (Compl. ¶¶ 43, 65, 82). Contributory infringement is alleged on the basis that Defendants offer to sell or sell the infringing battery technologies, knowing them to be "especially-made components that have no substantial non-infringing use" (Compl. ¶¶ 44, 66, 83).
  • Willful Infringement: The complaint pleads willfulness based on knowledge of the Asserted Patents "at least as of the date on which they are properly served with this Complaint" (Compl. ¶¶ 50, 72, 89). This allegation primarily supports a claim for post-filing willfulness, as no specific pre-suit knowledge or notice is alleged.

VII. Analyst’s Conclusion: Key Questions for the Case

  • A dispositive issue for the '649 patent will be one of claim construction: is the asserted claim governed by the broad "at least one additive" language quoted in the complaint, or by potentially narrower language in the issued patent? The viability of this infringement count may depend entirely on the resolution of this discrepancy.
  • A key evidentiary question for the '961 patent will be one of technical proof: can the plaintiff's evidence, primarily SEM images, demonstrate that the active particles are "attached" via the specific "electrostatic or covalent bonding" described in the specification, or will the evidence show only a physical admixture that falls outside the claim scope?
  • A central legal question for the '649 patent will be one of definitional scope: can the term "dispersion," which implies a suspension of particles in a fluid, be construed to read on the accused final, solid battery electrode? Alternatively, must Plaintiffs prove that an infringing liquid dispersion was necessarily used as an intermediate step in the Defendants' confidential manufacturing process?