DCT

2:24-cv-00107

Molecular Rebar Design LLC v. LG Energy Solution Ltd

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00107, E.D. Tex., 02/16/2024
  • Venue Allegations: Plaintiff alleges venue is proper in the Eastern District of Texas because Defendant has done business, committed acts of infringement, and continues to commit acts of infringement in the district.
  • Core Dispute: Plaintiff alleges that Defendant’s lithium-ion batteries infringe five patents related to the use of discrete, functionalized carbon nanotubes to improve battery performance.
  • Technical Context: The technology concerns the use of disentangled carbon nanotubes (CNTs) as a structural and conductive component within lithium-ion batteries to enhance electrical performance and durability.
  • Key Procedural History: The complaint alleges that Defendant had pre-suit notice of U.S. Patent Nos. 9,636,649 and 10,608,282 due to a prior lawsuit filed in the District of Delaware on August 29, 2022, which may be relevant to the claim of willfulness for those two patents. The complaint also references a Texas Supreme Court case involving Defendant's predecessor, LG Chem, to support personal jurisdiction.

Case Timeline

Date Event
2009-12-18 Earliest Priority Date for ’282 Patent
2010-12-14 Earliest Priority Date for ’649 Patent
2011-06-23 Earliest Priority Date for ’909, ’924, ’483 Patents
2014-08-19 ’909 Patent Issued
2015-03-03 ’924 Patent Issued
2017-05-02 ’649 Patent Issued
2018-12-11 ’483 Patent Issued
2019-01-23 Prior Texas state court suit filed against LG Chem
2020-03-31 ’282 Patent Issued
2020-12-01 LG Energy Solution spun off from LG Chem (approx.)
2022-08-29 Prior Delaware federal suit filed against LG
2023-01-01 LG announces plans to expand U.S. market presence (approx.)
2024-02-16 Complaint Filing Date

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

U.S. Patent No. 8,808,909 - Lithium Ion Batteries Using Discrete Carbon Nanotubes, Methods for Production Thereof, and Products Obtained Therefrom (Issued Aug. 19, 2014)

  • The Invention Explained:
    • Problem Addressed: The patent's background section identifies that commercially used lithium-ion batteries suffer from poor electrical conductivity and poor electrochemical stability, which leads to poor charge/discharge cycling ability (’909 Patent, col. 1:26-33). Conventional attempts to use CNTs were suboptimal because the CNTs remained in tangled bundles rather than being individually dispersed (’909 Patent, col. 2:40-47).
    • The Patented Solution: The invention proposes a composition where lithium-ion active materials, in the form of nanometer-sized crystals or layers, are attached to the surface of "discrete," or individual, carbon nanotubes (’909 Patent, col. 2:5-12). This structure is intended to improve electrical conduction, enhance mechanical strength against cracking during charge cycles, and improve lithium-ion transport (’909 Patent, col. 2:5-8).
    • Technical Importance: This approach sought to resolve fundamental performance bottlenecks in lithium-ion batteries by using CNTs not just as a simple additive, but as an engineered, discrete scaffolding to improve the interface with the active material.
  • Key Claims at a Glance:
    • The complaint asserts independent Claim 1 (Compl. ¶33).
    • Claim 1 requires:
      • A composition useful for lithium ion batteries comprising:
      • discrete carbon nanotubes having crystals or layers of lithium ion active material attached to their surface,
      • wherein the discrete carbon nanotubes have an aspect ratio of 10 to 500
      • and oxidation levels from 1% to 15% by weight of the carbon nanotube.

U.S. Patent No. 8,968,924 - Lithium Ion Batteries Using Discrete Carbon Nanotubes, Methods for Production Thereof and Products Obtained Therefrom (Issued Mar. 3, 2015)

  • The Invention Explained:
    • Problem Addressed: As a divisional of the application that led to the ’909 Patent, this patent addresses the same problems of poor conductivity and stability in conventional lithium-ion batteries (’924 Patent, col. 1:33-40).
    • The Patented Solution: The ’924 Patent also describes attaching ion-active materials to discrete CNTs to form a superior battery composition (’924 Patent, col. 2:12-17). The claims of this patent add a further requirement specifying the elemental composition of the ion-active material itself.
    • Technical Importance: This patent narrows the focus to specific, commonly used cathode chemistries, claiming the benefits of the discrete CNT architecture for those particular material systems.
  • Key Claims at a Glance:
    • The complaint asserts independent Claim 1 (Compl. ¶45).
    • Claim 1 requires:
      • A composition used in lithium ion batteries comprising:
      • discrete carbon nanotubes having ion active material attached to their surface,
      • wherein the discrete carbon nanotubes have an aspect ratio of 10 to 500 and oxidation levels from 1% to 15% by weight of the carbon nanotube,
      • and wherein the ion active material comprises a lithium metal salt and an element selected from the group consisting of: iron, manganese, cobalt, copper, nickel, vanadium, titanium, and mixtures thereof.

U.S. Patent No. 10,153,483 - Lithium Ion Batteries Using Discrete Carbon Nanotubes, Methods for Production Thereof and Products Obtained Therefrom (Issued Dec. 11, 2018)

  • Technology Synopsis: This patent describes compositions for lithium-ion batteries using "discrete, non-agglomerated, and exfoliated" carbon nanotubes. It specifically claims compositions where the lithium-ion active material is "ionically attached" to the CNT surface and specifies ratios of lithium ions to other ions, aiming to improve electrical and ionic conductivity (’483 Patent, col. 2:5-12; Claim 1).
  • Asserted Claims: The complaint asserts independent Claim 1 (Compl. ¶58).
  • Accused Features: The compositions within the LG HG2, HG6, and MJ1 batteries are accused of infringement (Compl. ¶56).

U.S. Patent No. 9,636,649 - Dispersions Comprising Discrete Carbon Nanotube Fibers (Issued May 2, 2017)

  • Technology Synopsis: This patent claims a "dispersion" that includes oxidized, discrete, multiwall CNTs with a specific aspect ratio, combined with at least one additive. The invention appears directed at creating stable, high-quality intermediate materials or formulations for use in manufacturing processes, such as for elastomers or other composites (’649 Patent, Abstract; col. 2:5-12).
  • Asserted Claims: The complaint asserts independent Claim 1 (Compl. ¶71).
  • Accused Features: The dispersion of materials within the accused LG batteries is alleged to infringe (Compl. ¶69, ¶72).

U.S. Patent No. 10,608,282 - Binders, Electrolytes and Separator Films for Energy Storage and Collection Devices Using Discrete Carbon Nanotubes (Issued Mar. 31, 2020)

  • Technology Synopsis: This patent is directed to compositions used as specific components within an energy device, namely the binder, electrolyte, or separator film. It claims a composition comprising a plurality of discrete CNT fibers with specific distributions of aspect ratios and a portion of open-ended fibers, designed to improve properties like ionic conductivity and mechanical strength in these non-active-material components (’282 Patent, Abstract; col. 4:33-37).
  • Asserted Claims: The complaint asserts independent Claim 1 (Compl. ¶83).
  • Accused Features: The compositions used as binder, electrolyte, or separator film material within the accused LG batteries are alleged to infringe (Compl. ¶81, ¶85).

III. The Accused Instrumentality

  • Product Identification: The complaint identifies the LG HG2, HG6, and MJ1 batteries as the accused products (Compl. ¶13).
  • Functionality and Market Context: The accused products are described as lithium-ion batteries that are core components in a wide range of modern electronic products (Compl. ¶2). The complaint alleges that Defendant places these batteries into the stream of commerce with the understanding that they will be sold and used in Texas and throughout the United States (Compl. ¶13). Plaintiff further alleges Defendant's intent to expand its presence in the U.S. market, including for energy storage systems and batteries for electric vehicles (Compl. ¶14). The complaint provides photographic examples of the accused batteries, which are cylindrical cells commonly referred to by the "18650" form factor (Compl. p. 9, ¶34; p. 5, n.1).

IV. Analysis of Infringement Allegations

’909 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
[a] composition useful for lithium ion batteries comprising: The accused LG HG2, HG6, and MJ1 products are lithium-ion batteries. ¶34 col. 1:26-28
discrete carbon nanotubes having crystals or layers of lithium ion active material attached to their surface, The complaint provides scanning electron microscope (SEM) images allegedly showing discrete CNTs (highlighted in blue) interspersed with lithium ion active material in the accused products. For example, an SEM image of the LG HG2 battery cathode is presented as evidence of this structure. ¶35; p. 10 col. 2:5-12
wherein the discrete carbon nanotubes have an aspect ratio of 10 to 500 The complaint presents histograms for each accused product, allegedly depicting that the CNTs within them have an aspect ratio distribution falling within the claimed range. ¶36; p. 11 col. 2:48-49
and oxidation levels from 1% to 15% by weight of the carbon nanotube. The complaint alleges, without presenting supporting data in the document, that the CNTs in the accused products have the claimed oxidation levels. ¶37 col. 2:49-50

’924 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
[a] composition used in lithium ion batteries comprising: discrete carbon nanotubes having ion active material attached to their surface, As with the ’909 patent, the complaint points to SEM images allegedly showing discrete CNTs attached to ion active material in the accused batteries. ¶47; p. 16 col. 2:12-17
wherein the discrete carbon nanotubes have an aspect ratio of 10 to 500 and oxidation levels from 1% to 15% by weight of the carbon nanotube, The complaint again relies on histograms to allege the required aspect ratio and makes a conclusory allegation regarding the oxidation levels. ¶48-49; p. 17 col. 2:50-52
and wherein the ion active material comprise a lithium metal salt and an element selected from the group consisting of: iron, manganese, cobalt, copper, nickel, vanadium, titanium, and mixtures thereof. The complaint provides energy dispersive spectroscopy (EDS) imaging of the accused products, which allegedly shows the presence of elements from the claimed group (e.g., manganese and cobalt) in the ion active material. ¶50; p. 19 col. 1:40-44
  • Identified Points of Contention:
    • Scope Questions: A primary question will be whether the carbon nanotubes in the accused batteries are "discrete" as that term is used in the patents. The complaint presents SEM images contrasting "clumped" with "disaggregated" CNTs (Compl. p. 2, ¶3-4), but the analysis will depend on the specific definition adopted during claim construction and the evidence of how CNTs exist within the final, mass-produced battery composition.
    • Technical Questions: The complaint's allegations regarding specific quantitative parameters raise evidentiary questions. While it provides histograms for "Aspect Ratio" (Compl. p. 11, ¶36), it does not provide the underlying data, methodology, or measurement error. More significantly, the complaint makes conclusory allegations that the CNTs meet the "oxidation levels" limitation without presenting any supporting test data (Compl. ¶37, ¶49), which suggests this will be a key area of factual dispute during discovery.

V. Key Claim Terms for Construction

  • The Term: "discrete carbon nanotubes"

  • Context and Importance: This term is the central feature of the invention across multiple asserted patents. The patentability of the invention is premised on overcoming the prior art problem of "tangled bundle[s]" of CNTs (’909 Patent, col. 2:43-44). Infringement will therefore depend heavily on whether the CNTs in Defendant's batteries can be proven to be "discrete" rather than agglomerated.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The specification refers to the invention as overcoming difficulties by using "well dispersed carbon nanotubes" (’909 Patent, col. 2:11-12), which could support a construction focused on the functional outcome of dispersion rather than a specific structural state.
    • Evidence for a Narrower Interpretation: The specification defines the term as "carbon nanotubes capable of being separated to give individual tubes" (’909 Patent, col. 3:45-47). Further, the term "Molecular Rebar" is used to describe segments created by cutting the tubes, suggesting a specific, engineered form rather than just a dispersed state (’909 Patent, col. 3:9-14). The patent's own SEM figure (Fig. 1) shows highly separated, individual tubes.

  • The Term: "attached to their surface"

  • Context and Importance: The nature of the connection between the CNTs and the ion-active material is critical. A loose physical association might be easier to prove than a chemical bond. The strength and type of this "attachment" is what allegedly provides the claimed benefits of improved electron transfer and mechanical stability.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The general description focuses on the outcome—overcoming low conductivity and improving transport—which might not require a specific type of bond, allowing for interpretations that include strong physical adhesion or coating (’909 Patent, col. 2:5-8).
    • Evidence for a Narrower Interpretation: The background distinguishes the invention from prior art where "nanocrystals are not ionically or covalently attached" (’909 Patent, col. 2:48-50), which creates an implication that the claimed invention is ionically or covalently attached. Indeed, later-issued '483 Patent explicitly claims material that is "ionically attached" (Claim 1), suggesting the patentee viewed this as a distinct and patentable feature.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges active inducement, stating that Defendant distributes the accused batteries knowing they will be sold and used in the U.S. to infringe the patents. This is supported by citations to Defendant’s own press releases announcing U.S. market expansion strategies for energy storage and electric vehicle batteries (Compl. ¶39, ¶52, ¶65, ¶77, ¶92).
  • Willful Infringement: The complaint alleges willful infringement for all five patents. For the ’909, ’924, and ’483 patents, the basis is post-suit knowledge acquired from the filing of the instant complaint (Compl. ¶40, ¶53, ¶66). For the ’649 and ’282 patents, the complaint alleges pre-suit knowledge based on a prior patent infringement lawsuit Plaintiff filed against LG in the District of Delaware on August 29, 2022, asserting those same two patents (Compl. ¶78, ¶93).

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

  • A core issue will be one of definitional scope: can the term "discrete carbon nanotubes," which the patents frame as an engineered solution to "tangled bundles," be construed to read on the state of carbon nanotubes within a mass-produced, commercial battery? The outcome of claim construction for this term will be pivotal.
  • A key evidentiary question will be one of quantitative verification: the complaint makes specific claims about numerical ranges for CNT "oxidation levels" and "aspect ratio." The infringement analysis will depend on whether Plaintiff can produce credible, verifiable test data to prove that the accused products meet these precise quantitative limitations of the claims.
  • A central legal question for damages will be the impact of prior litigation on willfulness: for the ’649 and ’282 patents, the court will have to determine if the 2022 Delaware lawsuit provided Defendant with knowledge of infringement that was so clear as to render its subsequent conduct objectively reckless, thereby supporting a finding of willfulness.