DCT

2:24-cv-00108

Molecular Rebar Design LLC v. Samsung Electronics America Inc

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 2:24-cv-00108, E.D. Tex., 02/16/2024
  • Venue Allegations: Venue is alleged based on SAMSUNG ELECTRONICS AMERICA, Inc. maintaining a regular and established place of business in the district, from which it allegedly commits acts of infringement.
  • Core Dispute: Plaintiffs allege that the lithium-ion batteries within certain Samsung Galaxy smartphones infringe five patents related to the use of discrete carbon nanotubes (CNTs) to improve battery composition and performance.
  • Technical Context: The technology involves using disentangled, or "discrete," carbon nanotubes as a structural and conductive component within battery materials to enhance electrical performance and mechanical durability.
  • Key Procedural History: The complaint does not mention any prior litigation, Inter Partes Review (IPR) proceedings, or licensing history concerning the asserted patents.

Case Timeline

Date Event
2010-12-14 Earliest Priority Date for '649 Patent
2011-06-23 Earliest Priority Date for '909, '924, and '483 Patents
2012-06-21 Earliest Priority Date for '282 Patent
2014-08-19 '909 Patent Issued
2015-03-03 '924 Patent Issued
2017-05-02 '649 Patent Issued
2018-12-11 '483 Patent Issued
2020-03-31 '282 Patent Issued
2024-02-16 Complaint Filed

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

U.S. Patent No. 8,808,909

  • Patent Identification: U.S. Patent No. 8,808,909, "Lithium Ion Batteries Using Discrete Carbon Nanotubes, Methods for Production Thereof, and Products Obtained Therefrom," issued August 19, 2014.
  • The Invention Explained:
    • Problem Addressed: The patent describes conventional lithium-ion batteries as suffering from poor electrical conductivity and electrochemical stability. Materials expand and contract during charge/discharge cycles, leading to microcracks, higher internal resistance, and performance decline ('909 Patent, col. 1:30-34, 1:55-59).
    • The Patented Solution: The invention proposes attaching nanosized crystals or layers of lithium-ion active material directly to the surface of "discrete," well-dispersed carbon nanotubes. This network of interconnected CNTs is intended to enhance electron transfer, provide mechanical strength to resist cracking, and create a more uniform voltage gradient across the battery material ('909 Patent, col. 2:5-13, 2:18-28).
    • Technical Importance: By creating a robust, conductive nano-scaffolding, the invention aims to solve fundamental degradation problems in rechargeable batteries, potentially leading to longer lifespans and more stable performance ('909 Patent, col. 1:55-62).
  • Key Claims at a Glance:
    • The complaint asserts at least independent claim 1 (Compl. ¶32).
    • 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

  • Patent Identification: U.S. Patent No. 8,968,924, "Lithium Ion Batteries Using Discrete Carbon Nanotubes, Methods for Production Thereof, and Products Obtained Therefrom," issued March 3, 2015.
  • The Invention Explained:
    • Problem Addressed: As a divisional of the application leading to the '909 patent, the '924 patent addresses the same problem of poor conductivity and mechanical degradation in lithium-ion battery materials ('924 Patent, col. 1:33-40).
    • The Patented Solution: The solution is also a composition of discrete CNTs with active materials attached to their surface. The '924 patent claims a similar structure to the '909 patent, designed to improve electrical and mechanical properties by creating an integrated nanotube network within the battery's active material ('924 Patent, col. 2:5-16).
    • Technical Importance: The technology provides a framework to improve the performance of batteries using a specific class of cathode materials ('924 Patent, col. 7:35-37).
  • Key Claims at a Glance:
    • The complaint asserts at least independent claim 1 (Compl. ¶44).
    • 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%
      • And wherein the ion active material comprises a lithium metal salt and an element from the group: iron, manganese, cobalt, copper, nickel, vanadium, titanium, and mixtures thereof

Multi-Patent Capsule: U.S. Patent No. 10,153,483

  • Patent Identification: U.S. Patent No. 10,153,483, "Lithium Ion Batteries Using Discrete Carbon Nanotubes, Methods for Production Thereof, and Products Obtained Therefrom," issued December 11, 2018.
  • Technology Synopsis: This patent claims a composition of "discrete, non-agglomerated, and exfoliated" CNTs with ion active materials. It specifies that the active materials are "ionically attached" to the CNT surface and introduces a required ratio of lithium ions to other ions in the active material ('483 Patent, Abstract; col. 7:5-17).
  • Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶57).
  • Accused Features: The complaint alleges that the batteries in the accused smartphones contain compositions with discrete CNTs that are ionically attached to the active material, meet the claimed aspect ratio and oxidation levels, and satisfy the required ion ratio (Compl. ¶60-63).

Multi-Patent Capsule: U.S. Patent No. 9,636,649

  • Patent Identification: U.S. Patent No. 9,636,649, "Dispersions Comprising Discrete Carbon Nanotube Fibers," issued May 2, 2017.
  • Technology Synopsis: This patent is directed to a "dispersion" (a stable mixture of substances) rather than a final solid composition. It claims a dispersion containing a plurality of oxidized, discrete, multiwall CNTs with a specific aspect ratio (25 to 500) and at least one additive, where the CNTs are present in a concentration up to 30% by weight ('649 Patent, Abstract; col. 9:50-55).
  • Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶70).
  • Accused Features: The complaint alleges that the manufacturing of the accused batteries involves a dispersion meeting the claim elements, including the presence of additives such as binders or conductive agents (Compl. ¶72-74).

Multi-Patent Capsule: U.S. Patent No. 10,608,282

  • Patent Identification: U.S. Patent No. 10,608,282, "Binders, Electrolytes and Separator Films for Energy Storage and Collective Devices Using Discrete Carbon Nanotubes," issued March 31, 2020.
  • Technology Synopsis: This patent claims a composition specifically for use as a binder, electrolyte, or separator film within an energy device. The claims are highly specific, requiring a plurality of discrete, open-ended CNT fibers and defining precise percentages of those fibers that must fall within particular aspect ratio ranges (e.g., "40% to 90% by number...have an aspect ratio of 30-70") ('282 Patent, Abstract; col. 14:4-14).
  • Asserted Claims: The complaint asserts at least independent claim 1 (Compl. ¶83).
  • Accused Features: The complaint alleges that binder, electrolyte, or separator film materials within the accused batteries contain open-ended CNTs meeting the claimed aspect ratio distributions (Compl. ¶86, ¶89-91).

III. The Accused Instrumentality

  • Product Identification: The accused products are certain Samsung smartphones, including the Galaxy S9, Galaxy S10+, Galaxy S21 Ultra, and Galaxy S22 Ultra, and specifically the lithium-ion batteries contained within them (Compl. ¶31, ¶34).
  • Functionality and Market Context: The relevant functionality resides in the chemical compositions used in the anodes and/or cathodes of the batteries that power the accused smartphones (Compl. ¶33, ¶45). The complaint supports its allegations with photographs of the batteries from various accused phone models. For example, a photograph of the battery from a Samsung Galaxy S9 is provided to identify it as a lithium-ion battery (Compl. ¶34, p. 8). The complaint also presents scanning electron microscope (SEM) images, energy dispersive spectroscopy (EDS) images, and data histograms derived from testing materials from the accused batteries to allege infringement at the nanoscopic level (Compl. ¶35, ¶36, ¶50).

IV. Analysis of Infringement Allegations

U.S. Patent No. 8,808,909 Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
[a] composition useful for lithium ion batteries The accused products are smartphones that contain lithium-ion batteries. ¶34 col. 1:26-34
comprising: discrete carbon nanotubes The battery composition allegedly contains individual, disentangled carbon nanotubes, which are depicted in highlighted SEM images taken from the accused products. ¶35 col. 1:42-44
having crystals or layers of lithium ion active material attached to their surface, The SEM images allegedly show active battery material present on the surface of the discrete carbon nanotubes. ¶35 col. 2:6-9
wherein the discrete carbon nanotubes have an aspect ratio of 10 to 500 Graphical histograms of aspect ratio measurements from the Samsung Galaxy S21U and S22U are provided to show that the nanotubes fall within the claimed range. The complaint provides an "Aspect Ratio Histogram" for the Galaxy S21U to support this limitation (Compl. ¶36, p. 12). ¶36 col. 2:47-48
and oxidation levels from 1% to 15% by weight of the carbon nanotube. The complaint alleges the nanotubes have oxidation levels within this range, but does not provide specific data or figures to support this element. ¶37 col. 2:48-50
  • Identified Points of Contention:
    • Scope Questions: A central question will be whether the structures identified in the accused batteries meet the patent's definition of "discrete carbon nanotubes," which the specification contrasts with "tangled bundle[s]" ('909 Patent, col. 1:43-46). The dispute may focus on the degree of dispersion and separation required to be "discrete."
    • Technical Questions: The claim requires active material to be "attached" to the nanotubes. Litigation will likely explore the nature of this attachment—whether physical proximity shown in an SEM image is sufficient, or if evidence of a more specific ionic or covalent bond, as discussed in the patent specification ('909 Patent, col. 1:49-53), is required to prove infringement. The complaint does not provide sufficient detail for analysis of the alleged oxidation levels.

U.S. Patent No. 8,968,924 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, This functionality is alleged similarly to the '909 patent, citing SEM images that purport to show discrete CNTs with active material on their surface. ¶47 col. 1:33-40
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, This is alleged similarly to the '909 patent, supported by the same aspect ratio histograms and a bare assertion for the oxidation levels. ¶48-49 col. 8:8-10
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) images from the accused products, which allegedly show the presence of elements from this group, such as cobalt (Co). An EDS image from a Galaxy S9 is provided to show the elemental makeup (Compl. ¶50, p. 21). ¶50 col. 8:12-15
  • Identified Points of Contention:
    • Scope Questions: As with the '909 patent, the meaning of "discrete" and "attached" will be key points of dispute.
    • Technical Questions: The infringement allegation for the specific elemental composition hinges on analytical techniques like EDS. The reliability and interpretation of this data will be a key factual question. For example, does the presence of cobalt (Co) and other elements in the EDS scan prove they are part of the "ion active material" as claimed, or could they be present for other reasons?

V. Key Claim Terms for Construction

For '909 and '924 Patents

  • The Term: "discrete carbon nanotubes"

  • Context and Importance: This term is the foundation of all asserted patents. Its construction will determine whether the accused technology, which may feature varying levels of nanotube separation, falls within the scope of the claims. Practitioners may focus on this term because the patent contrasts it with "tangled bundle[s]" and describes it as "individual uniformly dispersed tubes" ('909 Patent, col. 1:43-44), raising the question of how much dispersion is required.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: The term could be argued to cover any state that is not a tightly "tangled bundle" as made by conventional gas-phase reactions ('909 Patent, col. 1:43-46), potentially including nanotubes that are merely separated or de-bundled, even if not perfectly individualized.
    • Evidence for a Narrower Interpretation: The specification's reference to "individual uniformly dispersed tubes" ('909 Patent, col. 1:43-44) and the process of "exfoliation" ('924 Patent, col. 3:56) could support a narrower definition requiring a high degree of separation into individual, untangled tubes, rather than just loose clusters.

  • The Term: "attached to their surface"

  • Context and Importance: This term defines the critical relationship between the nanotubes and the active material. The infringement analysis depends on whether the physical proximity shown in the complaint's SEM images (Compl. ¶35) satisfies this limitation. The '483 patent further refines this by requiring the material to be "ionically attached" (Compl. ¶58), making the nature of the bond central to the dispute.

  • Intrinsic Evidence for Interpretation:

    • Evidence for a Broader Interpretation: A defendant might argue that in the absence of more specific language (like "covalently bonded"), "attached" could simply mean physically adhered or in direct contact, a condition that might be met by the manufacturing process.
    • Evidence for a Narrower Interpretation: The patent states that the purpose of the attachment is to "provide for intimate electron transfer and enhanced mechanical strength" and explicitly mentions that nanocrystals are "not ionically or covalently attached" in the prior art ('909 Patent, col. 1:49-53). This language suggests that "attached" implies a functional, potentially chemical, connection stronger than mere physical contact.

VI. Other Allegations

  • Indirect Infringement: The complaint alleges induced infringement, stating that Samsung distributes the accused smartphones to third-party retailers and carriers (e.g., AT&T, Verizon) with the knowledge that they will be sold to and used by customers in the United States, thereby infringing the patents (Compl. ¶39, ¶52, ¶65, ¶78, ¶93).
  • Willful Infringement: Willfulness is alleged based on Samsung's continued infringement after receiving notice of the patents and the alleged infringement via the filing and service of the complaint itself. This is a claim for post-suit willfulness (Compl. ¶40, ¶53, ¶66, ¶79, ¶94).

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

The resolution of this case may turn on the following central questions for the court:

  • A core issue will be one of definitional scope: How "discrete" must the carbon nanotubes be to fall within the claims? The case will likely require a determination of whether the level of nanotube separation in Samsung's batteries meets the patents' requirement for "individual uniformly dispersed tubes" or if it remains closer to the "tangled" state described as prior art.
  • A second key issue will be one of functional connection: What level of proof is required to show that the active battery material is "attached" to the nanotube surfaces, as claimed? This will be particularly critical for the '483 patent, which requires an "ionic" attachment, raising the evidentiary bar from showing mere proximity in an image to demonstrating a specific type of chemical bond.
  • Finally, a central evidentiary question will be one of quantitative proof: Can the plaintiffs' technical evidence definitively show that the materials in Samsung's commercial batteries meet the very specific numerical limitations recited in patents like the '282 and '649, such as the precise aspect ratio distributions and weight percentages? The case will test whether lab-scale analysis of mass-produced consumer products can satisfy these narrow claim requirements.