Ascend Elements Inc v. Duesenfeld GmbH

1. Case Identification

• Case #: IPR2024-00948
• Patent #: 11,050,097
• Filed: May 21, 2024
• Petitioner(s): Ascend Elements, Inc.
• Patent Owner(s): Duesenfeld GmbH
• Challenged Claims: 1-3, 7-10, 12, 13, and 19

2. Patent Overview

• Title: Method for the Treatment of Used Batteries, In Particular Rechargeable Batteries, and Battery Processing Installation
• Brief Description: The ’097 patent discloses methods and installations for recycling used batteries. The process involves comminuting (e.g., shredding) the batteries, inactivating the resulting material by drying it under reduced pressure to remove electrolyte, and then filling a transport container with the inactivated material.

3. Grounds for Unpatentability

Ground 1: Obviousness over Hanisch alone or in combination with Dunagan - Claims 1-3, 7-10, 12, 13, and 19 are obvious over Hanisch, optionally in view of Dunagan.

• Prior Art Relied Upon: Hanisch (Patent 9,780,419) and Dunagan (Patent 9,450,277).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Hanisch, an earlier patent from the same lead inventor as the ’097 patent, discloses every limitation of the challenged claims. Hanisch taught a method for recycling galvanic cells by first comminuting them ("crushing") and then inactivating the material by drying. Specifically, Hanisch disclosed drying the comminuted fragments under vacuum at a pressure below the claimed 300 hPa maximum to remove electrolyte solvent. This drying process was described for both low-temperature (below 80°C, meeting claim 9) and high-temperature applications, rendering the material electrochemically inactive (meeting claims 2 and 13). Hanisch further disclosed an installation with a comminution unit and a connected drying device configured to operate under vacuum, mapping to apparatus claims 12 and 19. To the extent Hanisch did not explicitly teach filling a transport container, Petitioner asserted Dunagan taught this step by disclosing that processed recycling material is "disposed in super sacks or suitable carrier" for transport.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hanisch’s battery recycling process with Dunagan’s standard practice of packaging recycled materials for transport. This combination would be necessary to achieve the principal purpose of recycling: recovering valuable materials for reuse in downstream manufacturing, which requires transportation.
  • Expectation of Success (for §103 grounds): A POSITA would have a high expectation of success, as the combination merely involved applying a conventional material handling and packaging step (Dunagan) to the output of a known recycling process (Hanisch).

Ground 2: Obviousness over Hanisch in view of Meador, Shin, or Hayashi - Claims 1-3, 7-10, 12, 13, and 19 are obvious over Hanisch in view of Dunagan and one of Meador, Shin, or Hayashi.

• Prior Art Relied Upon: Hanisch (Patent 9,780,419), Dunagan (Patent 9,450,277), Meador (Patent 5,632,863), Shin (Patent 10,396,408), and Hayashi (Patent 9,843,077).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground asserted that even if Hanisch alone was deemed insufficient, the combination with Meador, Shin, or Hayashi would render the claims obvious. Each of these secondary references explicitly taught the key step of heating battery materials under vacuum at pressures well below 300 hPa to inactivate them. Meador disclosed heating comminuted battery materials in a pyrolysis chamber under a "slight vacuum" (approx. 16-33 hPa). Shin taught heating waste batteries under vacuum to evaporate electrolyte gas, noting this reduces the risk of explosion. Hayashi taught processing lithium-ion batteries by heating them under reduced pressure (≤10 hPa) to evaporate organic solvents. These references confirmed the obviousness of applying vacuum drying to Hanisch’s battery recycling process.
  • Motivation to Combine (for §103 grounds): A POSITA would combine Hanisch with Meador, Shin, or Hayashi to achieve well-known benefits. These included improved electrolyte evaporation efficiency at lower temperatures, reduced formation of toxic hydrogen fluoride during heating, and better control over potentially flammable gases—all significant safety and efficiency advantages in battery recycling.
  • Expectation of Success (for §103 grounds): Success was predictable because all references addressed the same technical problem of safely inactivating battery materials. They all disclosed using vacuum-compatible, gas-proof vessels that were directly compatible with Hanisch’s described apparatus, making the integration of vacuum drying straightforward.

4. Arguments Regarding Discretionary Denial

• Petitioner argued that discretionary denial under Fintiv or 35 U.S.C. §325(d) is unwarranted.
• Fintiv Factors: Petitioner contended that denial would be inappropriate because it agreed to a Sotera stipulation, which would prevent it from pursuing the same grounds in the parallel district court litigation if an IPR is instituted. Furthermore, the parallel litigation is in a nascent stage, with no trial date set and key events like the Markman hearing scheduled far in the future, meaning the IPR would conclude well before a district court trial.
• §325(d) Factors: Petitioner asserted that denial under §325(d) is improper because the Examiner committed material error by failing to appreciate the full scope of the prior art during prosecution. The Examiner only cited isolated, non-analogous portions of Hanisch and Meador to reject unrelated dependent claims and never considered their core teachings regarding the inactivation of comminuted battery material via vacuum drying. Key references, including Dunagan, Shin, and Hayashi, were not before the Examiner at all.

5. Relief Requested

• Petitioner requests institution of an inter partes review and cancellation of claims 1-3, 7-10, 12, 13, and 19 of the ’097 patent as unpatentable.