DCT

5:24-cv-00135

LithiumHub LLC v. Relion Battery Shenzhen Technology Co

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 5:24-cv-00135, E.D. Tex., 09/13/2024
  • Venue Allegations: Venue is alleged to be proper because the defendant is a foreign corporation not resident in the United States and may therefore be sued in any judicial district.
  • Core Dispute: Plaintiff alleges that Defendant’s lithium-ion batteries infringe two patents related to solid-state control circuits for efficient fault detection and correction in batteries.
  • Technical Context: The technology concerns battery management systems that use specific solid-state switch configurations to protect lithium-ion batteries from damaging conditions like over-charging, over-discharging, and short circuits.
  • Key Procedural History: The complaint notes that the inventor, Martin Koebler, acquired the Asserted Patents in a 2020 bankruptcy sale of his former company. The complaint also alleges that Defendant was put on notice of the patents and its alleged infringement through an International Trade Commission (ITC) complaint filed on September 12, 2024, one day prior to the filing of the present lawsuit. This ITC action is cited as the basis for allegations of knowing inducement and willful infringement.

Case Timeline

Date Event
2010-11-29 Priority Date for '994 and '207 Patents
2016-08-09 U.S. Patent No. 9,412,994 Issues
2018-04-24 U.S. Patent No. 9,954,207 Issues
2024-09-12 Related ITC Complaint Filed Against Defendant
2024-09-13 Complaint Filed

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

U.S. Patent No. 9,412,994 - “Lithium Starter Battery and Solid State Switch Therefor,” issued August 9, 2016

The Invention Explained

  • Problem Addressed: The patent background describes conventional lead-acid starter batteries as heavy, bulky, and inefficient, particularly in cold weather. It further notes that while protective circuits exist to prevent over-charging or over-discharging, they can be complex, temperamental, and may prevent the extraction of all available energy when required. (’994 Patent, col. 1:26-61).
  • The Patented Solution: The invention proposes a lithium-ion battery with a "unique configuration" of solid-state switches (such as MOSFETs) for protection. This configuration involves connecting pairs of switches in parallel, with the "Sources" or "Drains" of the switches within each pair tied together. This arrangement allows a controller to independently manage the flow of current for charging and discharging, thereby preventing fault conditions (e.g., stopping charging during an over-voltage event while still allowing the battery to provide power) in a more granular and reliable way than conventional relays. (’994 Patent, col. 2:36-56; Fig. 16).
  • Technical Importance: This design aims to provide robust, compact, and automated protection for high-power lithium battery systems, improving safety and longevity without the drawbacks of larger, mechanical contactors. (’994 Patent, col. 2:57-65).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 14 (Compl. ¶36).
  • Independent Claim 1 recites a battery pack for a 12-120V system, comprising: a housing, at least one lithium-based cell, and a circuit board with a cutoff function. The core of the claim is the circuit board including:
    • a plurality of pairs of solid state switches connected in a parallel configuration to another pair of solid state switches, each having a source and a drain;
    • the switches of a pair are configured such that either the drains are connected or the sources are connected; and
    • this parallel switch configuration is connected in series with the battery cell(s).
  • Independent Claim 14 recites a similar battery pack for a 1-120V system with a circuit board having a cutoff function and the same core solid-state switch configuration.
  • The complaint reserves the right to assert additional claims (Compl. ¶36).

U.S. Patent No. 9,954,207 - “Lithium Battery with Solid State Switch,” issued April 24, 2018

The Invention Explained

  • Problem Addressed: The patent, a continuation-in-part of the ’994 Patent, addresses the same technical problems: the limitations of lead-acid batteries and the safety issues associated with lithium battery chemistries, such as thermal runaway from over-charging, which conventional protection methods do not fully solve. (’207 Patent, col. 1:30-col. 2:6).
  • The Patented Solution: The '207 Patent describes the same solid-state switching solution as its parent patent. It utilizes pairs of parallel-connected switches (e.g., MOSFETs) where the sources or drains are electrically tied, enabling independent control over charging and discharging pathways to protect the battery cells. (’207 Patent, col. 2:35-60; Fig. 16).
  • Technical Importance: The invention provides a method for creating a safer, more reliable, and lighter high-power battery system that can serve as a "drop-in" replacement for older technologies in various applications, including as a deep cycle battery. (’207 Patent, col. 5:1-5).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 12 (Compl. ¶76).
  • Independent Claim 1 recites a battery pack for powering an electric motor, comprising: a housing, a lithium-based cell, and a "solid state switching apparatus" that includes the same parallel-pair, source-to-source or drain-to-drain switch configuration as recited in the ’994 Patent.
  • Independent Claim 12 recites a "deep cycle battery" for a 6-800V system that includes a "battery management system" for protection against various faults, wherein the circuit board contains the same core solid-state switching apparatus.
  • The complaint reserves the right to assert additional claims (Compl. ¶76).

III. The Accused Instrumentality

Product Identification

  • The complaint identifies a range of lithium-ion batteries sold under the brand names “Tracker,” “Cabela’s,” and “RELiOn®” as the "Accused Products" (Compl. ¶¶ 22, 27). Specific product lines mentioned include the "Tracker High Output Lithium Deep Cycle Battery" and the "RELiOn RB100-HP" (Compl. ¶¶ 27, 36, 76).

Functionality and Market Context

  • The Accused Products are alleged to be manufactured by Defendant in China and imported and sold in the U.S. by distributors such as Bass Pro LLC, Cabela's LLC, and Navico Group Americas, LLC (Compl. ¶¶ 23-25). The complaint alleges these batteries are used in applications such as marine vessels and recreational vehicles (Compl. ¶¶ 24, 27). The complaint includes a screenshot from the Cabela's website for a "Non-Spillable Lithium Iron Phosphate Battery," which notes "Discharge Cut Off Voltage" and "Charge Cut Off Voltage" on its label, suggesting the presence of a protective cutoff function (Compl. p. 8, Exhibit E). A screenshot of the RELiOn RB100-HP battery shows its external housing and branding (Compl. p. 9, Exhibits F and G).

IV. Analysis of Infringement Allegations

The complaint references claim chart exhibits (Exhibits J, K, L, M) that are not attached to the filing. Therefore, the infringement allegations are summarized below in prose based on the complaint's narrative.

  • '994 and '207 Patent Infringement Allegations
    • The complaint alleges that the Accused Products, as represented by the RELiOn and Tracker batteries, infringe claims 1 and 14 of the ’994 Patent and claims 1 and 12 of the ’207 Patent (Compl. ¶¶ 36, 53, 76, 93). The core of the infringement theory is that, on information and belief, the Accused Products contain a battery management system with a solid-state switching circuit that practices the patented invention (Compl. ¶¶ 19, 36-69, 76-109). Specifically, Plaintiff alleges the internal circuitry of the Accused Products includes a "plurality of pairs of solid state switches" arranged in the claimed parallel configuration where the "drains" or "sources" of the switches are connected together, allowing for the independent control of charging and discharging (Compl. ¶¶ 40-42, 80-82). This circuit is alleged to perform the "cutoff function" recited in the claims. The screenshot of Plaintiff's own Ionic battery product page describes a "Battery Management Systems (BMS) with power terminal cut-off and recovery," providing context for the type of system Plaintiff alleges is in the accused batteries (Compl. p. 7).
  • Identified Points of Contention:
    • Evidentiary Question: The complaint is filed on "information and belief" regarding the internal circuitry of the Accused Products. A central issue for the court will be an evidentiary one: does discovery reveal that the Accused Products actually contain the specific solid-state switching architecture—namely, pairs of parallel-connected switches with their sources or drains tied together—as required by the asserted claims?
    • Technical Question: Assuming the accused circuits contain paired solid-state switches, a further technical question is whether they are "connected in a parallel configuration to another pair of solid state switches" and function in the manner described in the patents. The case may turn on the precise electrical topology and operational logic of the accused battery management systems.

V. Key Claim Terms for Construction

  • The Term: "a plurality of pairs of solid state switches . . . configured such that either the drains of the switches are connected or the sources of the switches are connected"
  • Context and Importance: This phrase, appearing in all asserted independent claims, describes the core structural arrangement of the invention. The outcome of the infringement analysis will depend heavily on its construction, as the case hinges on whether the accused batteries possess this specific architecture. Practitioners may focus on this term because it is the primary point of novelty cited by the inventor.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification describes this as a "unique configuration" and an "unconventional approach" but provides numerous embodiments, including N-type and P-type switches and various circuit layouts (e.g., ’994 Patent, Figs. 16-23). A plaintiff may argue the term should be read broadly to cover any circuit that uses at least two pairs of switches arranged to achieve independent bidirectional control, consistent with the patent's stated purpose.
    • Evidence for a Narrower Interpretation: A defendant may argue that the language requires a more specific structure than simply having switches with common drains or sources. They might point to the detailed schematics like Figure 16 of the ’994 Patent, which shows multiple parallel sets of these switch pairs, to argue for a more complex required structure. The term "connected in a parallel configuration to another pair" could be argued to imply a specific electrical relationship between the pairs themselves, not just the switches within a pair.

VI. Other Allegations

  • Indirect Infringement: The complaint asserts induced infringement under 35 U.S.C. § 271(b) as its sole cause of action (Compl. ¶¶ 34, 74). It alleges Defendant actively encourages infringement by manufacturing the Accused Products for the U.S. market, promoting them through its website, and directing U.S. customers to retailers like Bass Pro and Cabela's (Compl. ¶¶ 30-31).
  • Willful Infringement: The complaint alleges that Defendant has had actual knowledge of the Asserted Patents and its infringement since at least September 12, 2024, the date an ITC Complaint was filed against it (Compl. ¶¶ 32, 70, 110). This alleged post-suit knowledge forms the basis of the willfulness claim, with Plaintiff seeking enhanced damages (Compl. ¶¶ 73, 113).

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

  • A primary issue will be one of evidentiary proof: what is the actual circuit architecture inside the accused "Tracker," "Cabela's," and "RELiOn®" batteries? The case will likely depend on whether discovery confirms, on a technical level, the presence of the specific parallel-pair, source-to-source or drain-to-drain solid-state switch configuration required by the asserted claims.
  • A central legal issue will be one of claim construction: how will the court define the scope of the phrase "a plurality of pairs of solid state switches" and the nature of the connection between them? The breadth of this definition will be critical in determining whether the accused circuits, once revealed, fall within the patent claims.
  • A key question regarding damages will be willfulness: did the filing of a parallel ITC complaint one day before this lawsuit provide the Defendant with the requisite knowledge and intent for its ongoing actions to constitute willful infringement, potentially justifying an award of enhanced damages?