• BASF And UChicago Argonne File New 337 Complaint Regarding Certain Lithium Metal Oxide Cathode Materials
  • February 26, 2015 | Authors: Alexander B. Englehart; Eric W. Schweibenz
  • Law Firm: Oblon, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On February 20, 2015, BASF Corp. of Florham Park, New Jersey ("BASF") and UChicago Argonne LLC of Lemont, Illinois ("Argonne") (collectively, "Complainants") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.

    The complaint alleges that Umicore N.V. of Belgium, Umicore USA Inc. of Raleigh, North Carolina, Makita Corp. of Japan, Makita Corp. of America of Buford, Georgia, and Makita U.S.A. Inc. of La Mirada, California (collectively, the "Proposed Respondents") unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain lithium metal oxide cathode materials, lithium-ion batteries containing same, and products with lithium-ion batteries containing same that infringe one or more claims of U.S. Patent Nos. 6,677,082 (the '082 patent) and 6,680,143 (the '143 patent) (collectively, the "asserted patents").

    According to the complaint, the asserted patents generally relate to certain lithium metal oxide cathode materials used in the cathode of lithium-ion batteries. In particular, the asserted patents relate to a lithium metal oxide positive electrode for a non-aqueous lithium cell, and cells and batteries containing the same. The complaint states that the inventions of the asserted patents allow the electrode to include excess lithium without sacrificing the stability thereof.

    In the complaint, Complainants state that the Proposed Respondents import and sell products that infringe the asserted patents. The complaint specifically refers to certain Makita power drills and corresponding lithium-ion batteries as infringing products.

    Regarding domestic industry, Complainants state that they practice the asserted patents and have invested in various activities relating to products protected by the asserted patents in the U.S. In particular, Argonne is the owner of the asserted patents and manages the Argonne National Laboratory for the U.S. Department of Energy. Complainants state that Argonne has and continues to invest substantially in the research, development, and testing of the inventions of the asserted patents in the U.S. Further, BASF has an exclusive license to the asserted patents, subject to preexisting license grants, and according to the complaint has invested in plant and equipment, labor and capital, and engineering and research and development in the U.S. related to the production of materials that practice the asserted patents and/or the incorporation of such materials into products that practice the asserted patents. Complainants specifically refer to relevant BASF facilities in Michigan, Kentucky, and Ohio.

    As to related litigation, Complainants state that, concurrently with the filing of the instant ITC complaint, they are also filing a complaint in the U.S. District Court for the District of Delaware alleging that the Proposed Respondents infringe the asserted patents.

    With respect to potential remedy, Complainants request that the Commission issue a permanent exclusion order and a permanent cease and desist order directed at the Proposed Respondents and others acting on their behalf.