DCT
1:23-cv-00272
Amperex Technology Ltd v. Semiconductor Energy Laboratory Co Ltd
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Amperex Technology Limited (Hong Kong)
- Defendant: Semiconductor Energy Laboratory Co., Ltd. (Japan)
- Plaintiff’s Counsel: Kirkland & Ellis LLP
- Case Identification: Amperex Technology Ltd v. Semiconductor Energy Laboratory Co Ltd, 1:23-cv-00272, E.D. Va., Filed 02/28/2023
- Venue Allegations: Plaintiff alleges venue is proper because Defendant is a foreign patentee that has not designated a U.S. agent for service, making it subject to jurisdiction in the district under 35 U.S.C. § 293.
- Core Dispute: Plaintiff seeks a declaratory judgment that its lithium-ion batteries do not infringe Defendant's patent, which relates to specific chemical and structural compositions for positive electrode active materials.
- Technical Context: The technology concerns the materials science of lithium-ion battery cathodes, aiming to improve battery longevity and performance by modifying the microscopic structure of the active material particles.
- Key Procedural History: The action was filed in response to communications in January and February 2023, during which Defendant allegedly accused Plaintiff of infringement and demanded licensing fees. The complaint also notes that a court in a prior, separate litigation found Defendant to have engaged in inequitable conduct regarding a different patent. Plaintiff raises a defense of prior commercial use under 35 U.S.C. § 273.
Case Timeline
| Date | Event |
|---|---|
| 2016-07-05 | ’828 Patent Earliest Priority Date |
| 2020-08-11 | ’828 Patent Issue Date |
| 2023-01-01 | Pre-suit communications begin (approximate date) |
| 2023-02-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. 10,741,828 - "Positive Electrode Active Material Including Lithium Cobaltate Coated with Lithium Titanate and Magnesium Oxide," issued August 11, 2020.
The Invention Explained
- Problem Addressed: The patent addresses the need to improve the performance of lithium-ion secondary batteries, specifically seeking to enhance cycle performance, charge/discharge capacity, and long-term reliability under various conditions (’828 Patent, col. 1:45-51).
- The Patented Solution: The invention is a positive electrode active material particle with a specific multi-region, layered-crystal structure. This particle contains a core region (e.g., lithium cobaltate), an intermediate region, and an outer region, forming what is described as a "composite oxide" (’828 Patent, col. 9:56-10:14). The key inventive concept is the strategic placement of certain elements, such as a representative element (e.g., magnesium) and fluorine, within specific microscopic features of the particle, such as "crack portions" or "crystal defects," to improve electrochemical stability during charging and discharging (’828 Patent, Abstract; col. 2:30-44).
- Technical Importance: This approach seeks to mitigate the degradation of cathode materials at high voltages, a critical factor for developing next-generation, high-energy-density batteries for applications like consumer electronics and electric vehicles (’828 Patent, col. 1:30-44).
Key Claims at a Glance
- The complaint identifies independent claims 1 and 5 as being at issue (Compl. ¶23).
- Independent Claim 1: Its essential elements are:
- A lithium-ion secondary battery comprising a positive electrode active material layer.
- The layer comprises a positive electrode active material particle.
- The particle comprises a first transition metal, a second transition metal, a representative element, and fluorine.
- The representative element and the fluorine are present in a crack portion observed from a TEM image in the particle.
- Independent Claim 5: Its essential elements are:
- A lithium-ion secondary battery comprising a positive electrode active material layer.
- The layer comprises a positive electrode active material particle.
- The particle comprises a first transition metal, a second transition metal, a representative element, and fluorine.
- The representative element and the fluorine are present in a portion which includes crystal defects observed from a TEM image in the particle.
- The complaint states that Plaintiff reserves the right to address dependent claims 2-4 and 6-8 (Compl. ¶26, ¶27).
III. The Accused Instrumentality
Product Identification
- The accused products are Plaintiff’s "Li-ion batteries using lithium cobalt oxides for positive electrodes" (Compl. ¶17).
Functionality and Market Context
- The products are rechargeable lithium-ion and lithium-polymer batteries used to power a wide range of devices, including laptops, smartphones, drones, and electric vehicles (Compl. ¶11, ¶14). The complaint alleges they are supplied to global electronics manufacturers and that Plaintiff is a "distinguished producer" in this market (Compl. ¶11). The central controversy relates to the microscopic chemical composition and structure of the positive electrode material within these batteries (Compl. ¶17). No probative visual evidence provided in complaint.
IV. Analysis of Infringement Allegations
As this is a declaratory judgment action, the "allegations" are Plaintiff's specific denials of infringement.
’828 Patent Infringement Allegations
| Claim Element (from Independent Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...wherein the representative element and the fluorine are present in a crack portion observed from a TEM image in the positive electrode active material particle. | The complaint alleges that Plaintiff's Accused Products do not have a "crack portion" in the positive electrode active material particle where the specified elements are present. | ¶26 | col. 10:55-65 |
| Claim Element (from Independent Claim 5) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| ...wherein the representative element and the fluorine are present in a portion which includes crystal defects observed from a TEM image in the positive electrode active material particle. | The complaint alleges that Plaintiff's Accused Products do not have "a portion which includes crystal defects" in the positive electrode active material particle where the specified elements are present. | ¶27 | col. 10:50-55 |
- Identified Points of Contention:
- Factual Questions: The dispute centers on the physical and chemical reality of the accused products at a microscopic level. The primary question is whether Plaintiff's battery particles, when analyzed, contain the claimed elemental compositions within the specified structural features. The claims' requirement that these features be "observed from a TEM image" suggests that Transmission Electron Microscopy analysis will be the central form of evidence.
- Scope Questions: The case may turn on the precise definition of claim terms. A key question is whether any microscopic fissure constitutes a "crack portion," or if the term is limited to the specific types of internal cracks illustrated in the patent. Similarly, it raises the question of what level of atomic-level disorder constitutes a "crystal defect" for the purposes of Claim 5.
V. Key Claim Terms for Construction
The Term:
"a crack portion observed from a TEM image"(Claim 1)- Context and Importance: This term is the explicit basis for Plaintiff's asserted non-infringement of Claim 1 (Compl. ¶26). Its construction will define the physical evidence required to prove or disprove the presence of the claimed feature.
- Intrinsic Evidence for a Broader Interpretation: A party might argue that the plain and ordinary meaning should apply, covering any observable crack-like feature within the particle, without limitation to its origin or morphology.
- Intrinsic Evidence for a Narrower Interpretation: The specification illustrates a "crack portion" (106) in Figure 1C and describes it as a feature that may be present "inside the positive electrode active material" (’828 Patent, col. 10:52-53, 10:57-59). This could support an argument that the term is limited to specific types of internal, rather than superficial, cracks.
The Term:
"a portion which includes crystal defects observed from a TEM image"(Claim 5)- Context and Importance: This term is the explicit basis for Plaintiff's asserted non-infringement of Claim 5 (Compl. ¶27). Practitioners may focus on this term because its scope will determine whether common, naturally occurring imperfections in crystal structures fall within the claim, or if it is limited to a more specific type of defect disclosed in the patent.
- Intrinsic Evidence for a Broader Interpretation: One might argue the term encompasses any observable deviation from a perfect crystal lattice, as "crystal defects" is a broad term of art in materials science.
- Intrinsic Evidence for a Narrower Interpretation: The patent specification distinguishes "crystal defects" from "a crack portion," suggesting they are distinct categories (’828 Patent, col. 10:50-55). Furthermore, the patent describes a complex, multi-region particle structure. A party could argue the term should be construed in that context to mean specific defects related to the interfaces between the different crystal regions, rather than any random imperfection.
VI. Other Allegations
- Indirect Infringement: Plaintiff seeks a declaration that it does not indirectly infringe any claim of the ’828 Patent (Compl. ¶20). The complaint's basis for this is derivative of its non-infringement argument, positing that without direct infringement by its products or their users, there can be no secondary liability (Compl. ¶31).
- Willful Infringement: Willfulness is not alleged by Plaintiff, but the complaint establishes a basis for Defendant to potentially counterclaim for willful infringement. It alleges that Defendant provided Plaintiff with pre-suit notice of the alleged infringement in January and February 2023 (Compl. ¶17).
VII. Analyst’s Conclusion: Key Questions for the Case
A central issue will be evidentiary and factual: Does microscopic analysis of Plaintiff's accused battery electrodes, using methods like Transmission Electron Microscopy as referenced in the claims, reveal the presence of a "representative element" and "fluorine" specifically located within "crack portions" or "crystal defects"? The case may depend heavily on competing expert analyses of the physical materials.
The resolution of the factual dispute hinges on a key question of claim construction: What are the legal definitions of the terms "crack portion" and "a portion which includes crystal defects"? The court's interpretation of these terms will set the standard against which the accused products are measured, determining whether common imperfections are covered or if the claims are limited to the specific structures disclosed in the patent.
A significant secondary question concerns the prior use defense: Can Plaintiff produce evidence sufficient to establish that it commercially used the accused battery technology in the United States before the patent's effective filing date, thereby providing a complete defense to infringement under 35 U.S.C. § 273, regardless of the technical merits? (Compl. ¶28).