DCT

7:24-cv-00220

LithiumHub LLC v. Bass Pro Outdoor World LLC

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 7:24-cv-00220, W.D. Tex., 09/13/2024
  • Venue Allegations: Venue is alleged based on Defendants operating retail stores and committing acts of infringement, including selling and offering to sell the accused products, within the Western District of Texas.
  • Core Dispute: Plaintiff alleges that Defendants’ "Tracker" and "Cabela’s" brand lithium-ion batteries infringe two patents related to control circuits and solid-state switches for protecting batteries from fault conditions.
  • Technical Context: The patents concern battery management systems using a specific solid-state switch configuration to independently control charging and discharging, aiming to improve the safety and lifespan of lithium-ion batteries used in applications like engine starting and deep cycle power.
  • Key Procedural History: The patents were invented by Martin Koebler, who founded a predecessor company that later entered bankruptcy. Mr. Koebler allegedly purchased the patents from the bankruptcy estate in 2020. The complaint was filed one day after Plaintiffs filed a related complaint against the same Defendants at the International Trade Commission (ITC), an event which forms the basis for the willfulness allegations in this case.

Case Timeline

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

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 describes the shortcomings of conventional lead-acid starter batteries, noting they are heavy, bulky, perform poorly in cold weather, and have a short lifespan (ʼ994 Patent, col. 1:28-38). It also explains that simple electromechanical relays or contactors used for battery protection are power-inefficient, cannot independently control charge and discharge currents, and are prone to "welding" shut under high loads, creating a safety issue (ʼ994 Patent, col. 2:15-29).
  • The Patented Solution: The patent proposes replacing lead-acid batteries with lithium-ion cells combined with a "unique configuration" of solid-state switches (e.g., MOSFETs) for protection (ʼ994 Patent, col. 2:35-40). The core of the invention is a circuit where pairs of switches are arranged with their "Sources" or "Drains" connected, which is described as an "unconventional approach" (ʼ994 Patent, col. 9:1-2). This topology allows a controller to independently manage charging and discharging; for example, it can turn off one switch to prevent overcharging while leaving another on to allow the battery to continue supplying power (ʼ994 Patent, col. 9:10-18).
  • Technical Importance: This design purports to offer a more robust, efficient, and safer method for managing high-power lithium batteries compared to traditional relays, enabling their practical use as replacements for lead-acid starter batteries (ʼ994 Patent, col. 4:20-30).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 14 (Compl. ¶27).
  • Independent Claim 1 recites a battery pack comprising:
    • A battery pack housing
    • At least one lithium-based rechargeable cell
    • A circuit board with a cutoff function, which includes a "plurality of pairs of solid state switches"
    • Each pair of switches is "connected in a parallel configuration to another pair of solid state switches"
    • The switches are configured such that "either the drains of the switches are connected or the sources of the switches are connected"
    • This parallel switch configuration is connected in series with the battery cell(s).
  • Independent Claim 14 recites a similar battery pack with nearly identical limitations regarding the housing, cell, and the specific solid-state switch configuration.
  • The complaint reserves the right to assert additional claims (Compl. ¶28).

U.S. Patent No. 9,954,207, "Lithium Battery with Solid State Switch," Issued April 24, 2018

The Invention Explained

  • Problem Addressed: As a continuation-in-part of the '994 Patent, this patent addresses the same technical problems related to the weight, performance, and safety limitations of lead-acid batteries and conventional protection circuits (ʼ207 Patent, col. 1:30-col. 2:34).
  • The Patented Solution: The ʼ207 Patent discloses the same core invention: a battery protection circuit based on a specific arrangement of solid-state switches. The detailed description and figures illustrating the switch configuration where "Sources" or "Drains" are tied together are substantially similar to those in the ʼ994 Patent (ʼ207 Patent, col. 2:35-60; Fig. 16). This patent explicitly broadens the invention's utility, stating it is "also useful as a Deep Cycle battery" (ʼ207 Patent, Abstract).
  • Technical Importance: The technology provides a method for granular control over battery operation, which is critical for both high-current starter applications and long-duration deep cycle applications where preventing over-discharge is paramount (ʼ207 Patent, col. 4:5-19).

Key Claims at a Glance

  • The complaint asserts independent claims 1 and 12 (Compl. ¶50).
  • Independent Claim 1 recites a battery pack for powering an electric motor, comprising a housing, a lithium cell, and a "solid state switching apparatus" that includes the same "plurality of pairs of solid state switches" in the specific parallel and series configuration found in the '994 Patent.
  • Independent Claim 12 recites a "deep cycle battery" that includes a housing, a lithium cell, and a "battery management system" that incorporates the same solid-state switching apparatus configuration as Claim 1.
  • The complaint reserves the right to assert additional claims (Compl. ¶51).

III. The Accused Instrumentality

Product Identification

  • The accused products are lithium-ion batteries sold under the "Tracker" and "Cabela's" brand names ("the Accused Products") (Compl. ¶23). The complaint identifies several specific products by name and SKU, including the "Cabela's Non-Spillable Lithium Iron Phosphate Battery" and various "Tracker Lithium" models for marine starting and deep cycle applications (Compl. ¶25).

Functionality and Market Context

  • The complaint alleges that the Accused Products are lithium-ion batteries imported and sold by Defendants through their e-commerce websites and retail stores for use in applications such as boating (Compl. ¶24). Visual evidence from the complaint shows the products marketed for these purposes. A screenshot from the Bass Pro Shops website shows the "Tracker Lithium Gen2 Super High Output Lithium Deep Cycle Battery" offered for sale (Compl. p. 7). A similar screenshot from the Cabela's website depicts the "Cabela's Non-Spillable Lithium Iron Phosphate Battery" (Compl. p. 8). The complaint alleges these products contain control circuits for fault detection and correction that infringe the asserted patents (Compl. ¶1).

IV. Analysis of Infringement Allegations

The complaint alleges direct infringement of the ʼ994 and ʼ207 patents but does not provide the referenced claim chart exhibits (Exhibits E and F) (Compl. ¶¶28, 51). The infringement allegations in the body of the complaint are conclusory, asserting that the Accused Products satisfy enumerated elements without providing a narrative explanation or identifying the specific corresponding components within the accused devices (Compl. ¶¶29-43, 52-66). The complaint does not provide sufficient detail for a tabular analysis of the infringement allegations.

  • Identified Points of Contention:
    • Technical Questions: A primary technical question for the court will be whether the internal battery management system (BMS) of the Accused Products in fact employs the specific circuit topology required by the asserted claims. Discovery and reverse engineering will be necessary to determine if the accused batteries contain a "plurality of pairs of solid state switches" where the "drains" or "sources" are connected together in the claimed configuration.
    • Scope Questions: The dispute may raise the question of whether the functionality of a modern, integrated BMS chip, which may achieve similar protective results through different means, falls within the scope of the claims. The patentability of the invention appears to rest on its specific circuit structure, not merely the function of protecting a battery.

V. Key Claim Terms for Construction

  • The Term: "a plurality of pairs of solid state switches with each pair of solid state switches connected in a parallel configuration to another pair of solid state switches" (ʼ994 Patent, Claim 1)
  • Context and Importance: This phrase appears in all asserted independent claims and describes the core structural element of the invention. The outcome of the infringement analysis will hinge on whether the Accused Products are found to contain this specific circuit architecture. Practitioners may focus on this term because it is a complex structural limitation, and any deviation in the accused devices' circuitry could be a basis for a non-infringement defense.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The specification states that the invention uses a "minimum of two solid state switches" arranged in a "unique configuration" (ʼ994 Patent, col. 4:63-65). Plaintiffs may argue that this, along with the numerous alternative embodiments shown in Figures 17-23, supports a construction that is not strictly limited to a single depicted example.
    • Evidence for a Narrower Interpretation: Defendants may argue that the specific language "a plurality of pairs" connected to "another pair" requires a specific structure of at least four switches arranged as shown in diagrams like Figure 16. The description of this as an "unconventional approach" could be used to argue that the claims are limited to the specific, non-standard circuit topology disclosed and should not cover conventional BMS designs (ʼ994 Patent, col. 9:1-2).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that as of the ITC complaint filing, Defendants have known that the Accused Products "are especially made or especially adapted for use in an infringing manner" (Compl. ¶68). This language tracks the statute for contributory infringement, though it is not explicitly pleaded as a separate count.
  • Willful Infringement: The complaint alleges that Defendants' infringement has been willful because they have had knowledge of the patents and their alleged infringement "at least since the filing of a Complaint against them at the International Trade Commission on September 12, 2024" (Compl. ¶¶46, 70). The allegation is based on the continuation of infringing activities after this date.

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

  • A central evidentiary question will be one of technical implementation: Does the internal circuitry of the "Tracker" and "Cabela's" brand batteries actually contain the specific "plurality of pairs of solid state switches" configuration as recited in the asserted claims? Resolving this will likely require extensive discovery and expert analysis of the accused devices.
  • The case will also turn on a question of claim construction: Can the structural limitations describing the switch configuration, which the patent calls "unconventional," be interpreted to read on the potentially more conventional battery management systems used in mass-market commercial products, or are the claims limited to the specific embodiments disclosed?
  • Finally, the viability of the willfulness claim will depend on the timing and sufficiency of notice: Does the filing of an ITC complaint just one day prior to the district court action constitute legally sufficient notice to establish the "objectively high likelihood" of infringement required for a finding of willfulness for any subsequent sales?