PTAB

IPR2020-00349

Ascend Performance Materials Operations LLC v. Samsung SDI Co Ltd

Key Events

Petition

Title: RECHARGEABLE LITHIUM BATTERY
Brief Description: The ’057 patent discloses electrolyte compositions for rechargeable lithium-ion batteries. The purported invention is the inclusion of an additive compound, defined by a generic "Chemical Formula 1," which is described as an asymmetric nitrile intended to improve the battery’s thermal impact durability and safety by suppressing electrolyte decomposition.

Prior Art Relied Upon: Shimura (WO 2012/029388).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Shimura discloses every element of the challenged claims. Shimura describes a secondary lithium-ion battery with a positive electrode, a negative electrode, and an electrolyte liquid. Critically, Shimura explicitly teaches using 1,3,6-hexanetricarbonitrile as a nitrile additive in an amount of 2% by weight. Petitioner asserted this specific compound satisfies all structural parameters of the ’057 patent’s "Chemical Formula 1" (with l=2, n=1, k=0, and m=3) and that the 2% concentration falls squarely within the claimed range of "about 0.1 to about 10%." This single reference was argued to anticipate independent claims 1 and 13, as well as the dependent claims which recite narrower ranges or the specific 1,3,6-hexanetricarbonitrile compound.

Prior Art Relied Upon: Kotani (JP 2010-073367) and Yamada (Application # 2011/0311864).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner asserted that Kotani teaches using aliphatic cyano compounds in lithium battery electrolytes to address known problems of gas generation and battery degradation. Kotani provides a general formula for these compounds and discloses 1,2,3-propanetricarbonitrile as an example. While Kotani does not explicitly disclose the 1,2,6-hexanetricarbonitrile recited in dependent claim 5 of the ’057 patent, Yamada provides the reason to create it.
- Motivation to Combine: Yamada was cited for its teaching that increasing the number of carbon atoms in a nitrile compound's hydrocarbon chain increases its boiling point, which is advantageous for suppressing gas production. Petitioner argued a person of ordinary skill in the art (POSA), starting with Kotani's teaching of 1,2,3-propanetricarbonitrile, would be motivated by Yamada to extend the carbon chain by adding three methylene groups to further improve performance. This predictable modification results directly in 1,2,6-hexanetricarbonitrile, satisfying the limitations of the challenged claims.
- Expectation of Success: A POSA would have a reasonable expectation of success because Yamada teaches that nitrile compounds with 3 and 6 carbons show comparable performance, indicating the modification would work as expected to suppress gas production.

Prior Art Relied Upon: Michot (CA 2246955 C).
Core Argument for this Ground:
- Prior Art Mapping: Petitioner argued that Michot discloses electrolyte compositions for use in electrochemical generators (lithium batteries) that comprise a polar solvent. Michot explicitly identifies 1,2,6-tricyanohexane as one such solvent, which Petitioner asserted satisfies the structural requirements of "Chemical Formula 1." Michot further teaches that this solvent may be present in a fraction of 3% to 30% by weight. Petitioner contended that this disclosed concentration range substantially overlaps with the range of "about 0.1 to about 10%" claimed in the ’057 patent, rendering the claims obvious.
Additional Grounds: Petitioner asserted additional challenges, including that claims 1-4 and 13-16 are anticipated by Kotani under 35 U.S.C. §102(b). Further obviousness grounds were asserted over Fujii in view of Yamada, over Michot in view of Sakata, and over Michot in view of Takahashi, which relied on similar rationales of modifying known nitrile compounds based on secondary references teaching specific concentrations or the benefits of chain lengthening.

"asymmetric structure" (claims 1, 13): Petitioner argued this term requires construction because its definition was substantively changed between the provisional and non-provisional applications. The patent defines it as being "asymmetric about the central carbon atom." Petitioner contended this was new matter not present in the provisional application, which is a key basis for its priority date challenge.
"Compound of Chemical Formula 1" (claims 1, 13): Petitioner argued that although the chemical structure shown does not explicitly depict alkyl substitutions, examples added in the non-provisional application (e.g., 1,3,5-hexanetricarbonitrile) can only meet the formula's parameters if the formula is construed to permit optional alkyl substitutions. This interpretation was also central to the priority date challenge.

Priority Date Challenge: A central contention of the petition was that the challenged claims are not entitled to the filing date of the provisional application (September 7, 2012). Petitioner argued that the definition of "asymmetric structure" and the scope of "Chemical Formula 1" were impermissibly broadened in the non-provisional application, constituting new matter. Consequently, Petitioner asserted the effective filing date for the challenged claims is the non-provisional filing date of March 14, 2013, making references published before March 14, 2012 (like Shimura) prior art under §102(b).

Petitioner argued that institution would be appropriate even where the Examiner previously considered related prior art. Specifically, Petitioner asserted that the Examiner erred during prosecution by failing to appreciate the full teachings of a Japanese prior art document related to Fujii. Petitioner contended that such Examiner error is a factor that weighs against discretionary denial under §325(d).

Petitioner requested institution of an IPR and cancellation of claims 1-5 and 13-17 of Patent 9,819,057 as unpatentable.