LG Energy Solution Ltd v. Molecular Rebar Design LLC

1. Case Identification

• Case #: IPR2024-01013
• Patent #: 10,153,483
• Filed: June 12, 2024
• Petitioner(s): LG Energy Solution, Ltd.
• Patent Owner(s): Molecular Rebar Design, LLC; Black Diamond Structures, LLC
• Challenged Claims: 1-4, 7-18

2. Patent Overview

• Title: Lithium Ion Batteries Using Discrete Carbon Nanotubes, Methods for Production Thereof and Products Obtained Therefrom
• Brief Description: The ’483 patent discloses compositions for lithium-ion batteries comprising discrete, oxidized carbon nanotubes (CNTs) that have lithium-ion active materials, such as nanometer-sized crystals or layers, attached to their surface.

3. Grounds for Unpatentability

Ground 1: Claims 1-4 and 7-18 are obvious over Ohata and Kavan in view of Gong or Liu

• Prior Art Relied Upon: Ohata (Application # 2004/0160156), Kavan (a 2010 Journal of Power Sources article), Gong (Chinese Application # CN 101364643A), and Liu (Chinese Application # CN 102456881A).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Ohata teaches a masterbatch process for producing an electrode paste containing unraveled, straightened, and well-dispersed CNTs for use in lithium-ion batteries. Kavan was argued to teach the benefits of using oxidized (functionalized) CNTs with phosphate olivine active materials (e.g., LiFePO4) to improve electrochemical performance and facilitate the attachment of the active material to the CNT surface. Petitioner contended the combination of Ohata and Kavan teaches most limitations, including discrete, oxidized CNTs in a mixture with ion active material crystals. To meet the limitation requiring a specific "ratio of lithium ion to other total ions" (e.g., 2:1 to 25:1), Petitioner turned to Gong and Liu. Both Gong and Liu were said to teach improving the performance of phosphate olivine materials by doping the lithium sites—replacing a fraction of the lithium ions with other migratable metal ions (e.g., Mg, Ti, Zr). Petitioner argued that the doping ratios disclosed in Gong and Liu result in a ratio of lithium ions to other migratable ions that falls squarely within the claimed ranges.
  • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Ohata's dispersion method with Kavan's oxidized CNTs to achieve superior dispersion and electrochemical performance, as oxidation was a known method to prevent CNT agglomeration and improve interfacing with active materials. A POSITA would further incorporate the teachings of Gong or Liu to improve the conductivity and discharge capacity of the phosphate olivine active material from Kavan, as lithium-site doping was a well-known technique for enhancing these exact properties.
  • Expectation of Success: A POSITA would expect success because the techniques were conventional and the components were compatible. For example, the slurry compositions in Ohata and Kavan were similar, and lithium-site doping of phosphate olivines for use with CNTs was a known and predictable method for improving battery performance.

Ground 2: Claims 1, 2, and 7-18 are obvious over Ohata, Kavan, and Ichinose

• Prior Art Relied Upon: Ohata (Application # 2004/0160156), Kavan (a 2010 Journal of Power Sources article), and Ichinose (Application # 2006/0269842).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative based on a potential claim construction of the "ratio of lithium ion" term advanced by the Patent Owner in co-pending litigation. Under this alternative construction, the ratio refers to Li+ ions versus PF6- counter-ions from the battery's electrolyte. Petitioner argued the base combination of Ohata and Kavan teaches all limitations of the claims except this ratio. Ichinose was cited for its disclosure of a conventional lithium-ion battery system that uses a standard LiPF6 electrolyte. Petitioner provided calculations based on the disclosures in Ichinose to show that during a normal charge/discharge cycle, the ratio of movable Li+ ions to PF6- ions would inherently fall within the ranges recited in the challenged claims (e.g., 2:1 to 25:1).
  • Motivation to Combine: The motivation was to use the improved electrode composition from the Ohata/Kavan combination within a standard, fully functional lithium-ion battery. Ichinose represents just such a conventional battery system, and a POSITA would have found it obvious to implement the improved electrode in a known battery configuration to realize its benefits.
  • Expectation of Success: Success was expected because it involved the routine implementation of a battery component (the electrode) into a standard and compatible battery architecture (the Ichinose system).

4. Key Claim Construction Positions

• Petitioner argued that the claim term "ratio of lithium ion to other total ions in the ion active materials" should be construed as a "ratio of lithium ions to other migratable ions in the ion active materials."
• This construction was asserted to be consistent with the claim language, which first introduces "ions" as "migratable ions," and the specification, which discusses such ratios in the context of mixtures of multiple migratable ions. Petitioner contended this construction is critical to Ground 1, where doping ions from Gong and Liu are the "other migratable ions."

5. Key Technical Contentions (Beyond Claim Construction)

• Priority Date Challenge: Petitioner argued the ’483 patent is not entitled to its claimed priority date from the '560 provisional application. It was asserted that the '560 application lacks written description support for two key limitations first introduced in the later non-provisional application: (1) the CNT "aspect ratio of 10 to 500" and (2) the "ratio of lithium ion...at least 2:1 to 25:1." Because these limitations were allegedly unsupported, Petitioner contended the critical date for the challenged claims is the filing date of the non-provisional application (June 21, 2012), making all asserted prior art references available.

6. Arguments Regarding Discretionary Denial

• Petitioner argued against discretionary denial under Fintiv, asserting that the co-pending district court case is in its early stages with minimal investment, and the scheduled trial date is proximate to the FWD deadline, making denial unnecessary. Petitioner also stipulated that, if an inter partes review (IPR) is instituted, it will not pursue the same invalidity grounds in the district court.
• It was further argued that denial under §325(d) is unwarranted because the petition presents new prior art and arguments, including Ohata, Kavan, Gong, Liu, and Ichinose, none of which were considered during the original prosecution of the ’483 patent.

7. Relief Requested

• Petitioner requests institution of an IPR and cancellation of claims 1-4 and 7-18 of Patent 10,153,483 as unpatentable under 35 U.S.C. §103.