UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`In the Matter of
`
`CERTAIN LITHIUM METAL OXIDE
`CATHODE MATERIALS, LITHIUM-ION
`BATTERIES CONTAINING SAME, AND
`PRODUCTS WITH LITHIUM-ION
`BATTERIES CONTAINING SAME
`
`Investigation No. _ _ _
`
`COMPLAINT OF BASF CORPORATION AND UCHICAGO ARGONNE LLC UNDER
`SECTION 337 OF THE TARIFF ACT OF 1930, AS AMENDED
`
`COMPLAINANTS
`
`PROPOSED RESPONDENTS
`
`BASF Corporation
`100 Campus Drive
`Florham Park, New Jersey 07932
`Telephone: (973) 245-6000
`
`UChicago Argonne LLC
`9700 S. Cass A venue
`Lemont, Illinois 60439
`Telephone: (630) 252-2000
`
`COUNSEL FOR COMPLAINANTS
`
`Gregg F. LoCascio, P.C.
`Sean M. McEldowney
`D. Sean Trainor
`Stefani A. Vande Lune
`KIRKLAND & ELLIS LLP
`655 Fifteenth Street, N.W.
`Washington, D.C. 20005
`Telephone: (202) 879-5000
`Facsimile: (202) 879-5200
`
`Umicore N.V.
`Broekstraat 31
`1 000 Brussels
`Belgium
`Telephone: 32 38217480
`
`Umicore USA Inc.
`3600 Glenwood A venue, Suite 250
`Raleigh, North Carolina 27612
`Telephone: (919) 786-9889
`
`Makita Corporation
`3-11-8, Sumiyoschino
`446-0072 Anjo 446-0072 Aichi
`Japan
`Telephone: 81-566981711
`
`Makita Corporation of America
`2650 Buford Highway
`Buford, Georgia 30518
`Telephone: (770) 932-2901
`
`Makita U.S.A. Inc.
`14930 Northam Street
`La Mirada, California 9063 8
`Telephone: (714) 522-8088
`
`SONY EXHIBIT 1006
`
`Page 1 of 40
`
`

`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION .....................................................•....................................................... 1
`
`COMPLAINANTS ............................................................................................................ 3
`
`III.
`
`THE PROPOSED RESPONDENTS ............................................................................... 5
`
`IV.
`
`THE TECHNOLOGY AND PRODUCTS AT ISSUE .................................................. 7
`
`V.
`
`THE PATENTS IN SUIT AND NONTECHNICAL DESCRIPTIONS OF
`THE INVENTIONS ........................................................................................................ 10
`
`A.
`
`B.
`
`C.
`
`D.
`
`Nontechnical Description of the '082 Patent.. ...................................................... 10
`
`Nontechnical Description ofthe '143 Patent.. ...................................................... 11
`
`Foreign Counterparts ............................................................................................ 12
`
`Licensees ............................................................................................................... 12
`
`VI.
`
`UNLAWFUL AND UNFAIR ACTS OF RESPONDENTS-- PATENT
`INFRINGEMENT ........................................................................................................... 13
`
`A.
`
`B.
`
`Infringement OfThe '082 Patent.. ........................................................................ 13
`
`Infringement OfThe '143 Patent.. ........................................................................ 14
`
`VII. SPECIFIC INSTANCES OF UNFAIR IMPORTATION AND SALE ..................... 16
`
`VIII. HARMONIZED TARIFF SCHEDULE ITEM NUMBERS ....................................... 18
`
`IX.
`
`RELATED LITIGATION .............................................................................................. 18
`
`X.
`
`THE DOMESTIC INDUSTRY ..................................................................................... 19
`
`A.
`
`B.
`
`BASF' s Domestic Industry ................................................................................... 19
`
`Argonne's. Domestic Industry ......... ~ ..................................................................... 25
`
`XI.
`
`RELIEF REQUESTED .................................................................................................. 28
`
`Page 2 of 40
`
`

`
`TABLE OF SUPPORTING MATERIALS
`
`EXHIBITS
`
`Exhibit No. Description
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`8A.
`
`8B.
`
`9.
`
`10.
`
`11.
`
`12.
`
`13.
`
`14.
`
`15.
`
`16.
`
`17.
`
`18.
`
`Certified Copy of U.S. Patent No. 6,677,082.
`
`Certified Copy ofU.S. Patent No. 6,680,143.
`
`Certified copy of assignment records for U.S. Patent No. 6,677,082.
`
`Certified copy of assignment records for U.S. Patent No. 6,680, 143.
`
`Licensing Agreement (CONFIDENTIAL).
`
`Amended Licensing Agreement (CONFIDENTIAL).
`
`Makita USA- Accessory Details, accessed on February 19,2015.
`
`Declaration of Alfred Sattelberger (CONFIDENTIAL).
`
`M. M. Thackeray Presentation, Argonne National Laboratory, January 17, 2005.
`
`M. M. Thackeray Presentation, September 29, 2009.
`
`ANL About Argonne, accessed on February 17,2015.
`
`ANL Transportation Technology R& D Center, Advanced Battery Research,
`Development, and Testing, accessed on February 17, 2015.
`
`Umicore; Rechargeable Batteries, accessed February 17, 2015.
`
`Makita Corporation Hoover Report, accessed on October 17, 2014.
`
`Makita Corporation of America Hoover Report, accessed on October 17, 2014. ·
`
`M:akita U.S.A., Inc. Hoover Report, accessed on October 17, 2014.
`
`Makita, Service Network, accessed on .February 17, 2015.
`
`Press Release, "Argonne battery technology confirmed by U.S. Patent Office,"
`January 29, 2014, accessed on February 17, 2015.
`
`List of Licensees and Recipients of Covenants Not to Assert
`(CONFIDENTIAL).
`
`Makita, Where to Buy, accessed on October 23, 2014.
`
`11
`
`Page 3 of 40
`
`

`
`19.
`
`20.
`
`21.
`
`22.
`
`23.
`
`24.
`
`25.
`
`26.
`
`27.
`
`28.
`
`29.
`
`30.
`
`31.
`
`32.
`
`Makita USA, Tool Details-XFDOI, accessed on November 21, 2014.
`
`Infringement claim charts for U.S. Patent No. 6,677,082- exemplary power tool
`product's battery 18V LXT® Lithium-Ion 3.0 Ah Battery BL1830 containing
`lithium metal oxide. electrodes for independent claims 1, 13, and 14.
`
`Infringement claim charts for U.S. Patent No. 6,680,143 -exemplary power tool
`product's battery 18V LXT® Lithium-Ion 3.0 Ah Battery BL1830 containing
`lithium metal oxide electrodes for independent claims 1 and 17.
`
`Kurt Vandeputte, Umicore Presentation, "Key developments in Rechargeable
`Battery Materials," Capital Markets Event, Seoul, South Korea, May 24, 2012.
`
`Avicenne Energy, "The Rechargeable Battery Market and Main Trends 2013-
`2025," March ·1 0, 2014.
`
`Kurt Vandeputte, Umicore Presentation, "The pivotal role of cathode materials in
`a growing Li-ion battery market," Batteries 2013 -Nice.
`
`Home Depot shopping cart, shipping information, order confirmation, unboxing
`photographs.
`
`Retailer websites for Makita Driver-Drill Kits.
`
`Declaration of Michael Fetcenko (CONFIDENTIAL).
`
`"BASF inaugurates Battery Materials R&D and Application Center in
`Amagasaki, Japan," BASF Press Release, February 5, 2014, accessed on
`November 21, 2014.,
`·
`
`Kaylee Remington, "BASF unveils new plant for lithium-ion battery material in
`Elyria," The Morning Journal, November 14, 2012, accessed on February 17,
`2015, available at http://www.morningjournal.com/general-news/20121114/basf(cid:173)
`unveils..:new-plant-for-lithium-ion-battery-material-in-elyria.
`
`M.M. Thackeray, et al., Comments on the structural complexity of lithium-rich
`Lil+xM1_x02 electrodes (M = Mn, Ni, Co) for lithium batteries, Electrochemistry
`Communications Vol. 8, 1531 (2006).
`
`Angela Hardin, "Argonne's lithium-ion battery technology to be commercialized
`by BASF," Argonne National Laboratory Press Release, June 3, 2009, accessed
`on February 17, 2015.
`
`"BASF celebrates grand opening of battery materials production plant in Elyria,
`Ohio," BASF Press Release, November 13, 2012, accessed on February 17, 2015.
`
`111
`
`Page 4 of 40
`
`

`
`33.
`
`34.
`
`35.
`
`36.
`
`37.
`
`38.
`
`39.
`
`40.
`
`41.
`
`42.
`
`43.
`
`44.
`
`45.
`
`46.
`
`47.
`
`"BASF Acquires Ovonic Battery Company, the global leader in NiMH battery
`technology," BASF Press Release, February 14, 2012, accessed on February 17,
`2015.
`
`"NCM Cathode Materials," BASF website, accessed on February 17, 2015.
`
`"Fact Sheet- Beachwood," BASF website, available at:
`https://www.basf.com/documents/us/en/Fact-Sheets/Beachwood-Ohio(cid:173)
`SiteFactSheet.pdf.
`
`"BASF to expand R&D site in Beachwood, Ohio," BASF Press Release, October
`1, 2013, accessed on February 17, 2015.
`
`"BASF chemical company expanding in Beachwood," Cleveland.com, October 2,
`2013, accessed on February 17, 2015.
`
`"BASF Celebrates Grand Opening of Battery Materials Production Plant in
`Elyria, Ohio," CSRwire, November 14, 2012, accessed on February 17, 2015.
`
`"BASF buys Ovonic Battery for $58M as parent files for Ch. 11," Automotive
`News, February 14, 2012, accessed on February 17, 2015.
`
`"BASF acquires US battery firm Ovonic," ICIS, February 14, 2012, accessed on
`February 17, 2015.
`
`"BASF acquires Ovonic Battery Company; NiMH leader to be part of BASF
`Battery Materials business unit (updated with ECD Chapter 11)," Green Car
`Congress, February 14, 2012, accessed on February 17, 2015.
`
`Eric Loveday, "BASF breaks ground on North America's largest lithium-ion
`cathode plant," autobloggreen, November 10, 2010, accessed on February 17,
`2015.
`
`"BASF Cathode Material Production Plant, Elyria, Ohio, United States of
`America," chemicals-technology.com, accessed on February 17, 2015.
`
`Adrienne Selko, "BASF Opens Electric Car Battery Materials Production Plant in
`Ohio," IndustryWeek, November 28, 2012, accessed on February 17, 2015.
`
`Cindy Leise, "BASF receives $24.6 million for plant expansion," The Chronicle(cid:173)
`Telegram, August 6, 2009, accessed on February 17, 2015.
`
`Phillippe Crowe, "Ohio-Made Lithium-Ion Battery Cathodes," hybridCars,
`November 15, 2012, accessed on February 17, 2015.
`
`"Fact Sheet- Catalysts Division Headquarters Iselin, New Jersey" BASF website,
`available at: https://www.basf.com/documents/us/en/Fact-Sheets/Iselin(cid:173)
`NewJersey-SiteFactSheet.pdf.
`
`IV
`
`Page 5 of 40
`
`

`
`48.
`
`49.
`
`50.
`
`51.
`
`52.
`
`53.
`
`54.
`
`55.
`
`56.
`
`57.
`
`58.
`
`59.
`
`60.
`
`61.
`
`62.
`
`63.
`
`64.
`
`65.
`
`"Fact Sheet- Elyria, Ohio" BASF website, available at:
`https://www.basf.com/documents/us/en/Fact-Sheets/Elyria-Ohio(cid:173)
`SiteFactSheet.pdf ..
`
`"Customer Service," BASF website, accessed on February 17, 2015.
`
`BASF Domestic Industry claim chart for U.S. Patent No. 6,677,082- claim 1
`(CONFIDENTIAL).
`
`ANL Domestic Industry claim chart for U.S. Patent No. 6,677,082- claim 1.
`
`BASF Domestic Industry claim chart for U.S. Patent No. 6,680,143- claim 1
`(CONFIDENTIAL).
`
`ANL Domestic Industry claim chart for U.S. Patent No. 6,680,143- claim 1.
`
`Umicore NV Hoovers Report, accessed on February 9, 2015.
`
`Umicore S.A. Capital IQ Report, accessed on February 9, 2015.
`
`Umicore S.A./N.V. Corporate Affiliations Report, accessed on February 9, 2015.
`
`Umicore USA Inc. Hoovers Report, ·accessed on February 9, 2015.
`
`Umicore USA, Inc. Capital IQ Report, accessed on February 9, 2015.
`
`"Fact Sheet- Louisville, Kentucky" BASF website, available at:
`https://www.basf.com/documents/us/en/Fact-Sheets/Louisville-Kentucky(cid:173)
`Si teF actSheet. pdf!.
`
`Home Depot "Cordless Power Drill" Search, conducted on February 9, 2015 at
`http://www .homedepot.com/.
`
`"Types of Lithium-ion Batteries," November 26, 2014, accessed on February 10,
`2015.
`
`Umicore, Rechargeable Battery Materials, accessed on February 17, 2015.
`
`Umicore, Power Tools, available at: http://rbm.umicore.com/powertools/.
`
`Marca M. Doeff, Batteries for Sustainability: Selected Entries from the
`Encyclopedia of Sustainability Science and Technology, Battery Cathodes 5 (R.J.
`Brodd, ed. 2013).
`
`Karalee A. Jarvis, et al., The Role of Composition in the Atomic Structure,
`Oxygen Loss, and Capacity of Layered Li-Mn-Ni Oxide Cathodes, Journals of
`Mater. Chem. A, 1353 (2014).
`
`v
`
`Page 6 of 40
`
`

`
`66.
`
`67.
`
`68.
`
`Michael M. Thackeray, et al., LbMn03-stabilized LiM02 (M = Mn, Ni, Co)
`Electrodes for Lithium-Ion Batteries, J Mater. Chern. 3115 (2007).
`
`Umicore Presentation, "Rechargeable Battery Materials," June, 2014, available at
`http://www. umicore.com/img/uploads/irpresentations/2/20 1406RBM _ InvestorKo
`rea. pdf.
`
`Physical Exhibit, Makita 18-Volt LXT Lithium-Ion Cordless V2 in. Driver-Drill
`Kit.
`
`Vl
`
`Page 7 of 40
`
`

`
`Appendix Item
`
`Description
`
`APPENDICES
`
`A.
`
`B.
`
`c.
`
`D.
`
`E.
`
`F.
`
`Certified copy of file wrapper for U.S. Patent No. 6,677,082.
`
`Certified copy of file wrapper for U.S. Patent No. 6,680;143.
`
`Certified copy of reexamination file wrapper for U.S. Patent No.
`6,677,082.
`
`Technical References cited in file wrapper for U.S. Patent No. 6,677,082.
`
`Technical References cited in file wrapper for U.S. Patent No. 6,680,143.
`
`Technical References cited in reexamination file wrapper for U.S. Patent
`No. 6,77,082.
`
`Vll
`
`Page 8 of 40
`
`

`
`I.
`
`INTRODUCTION
`
`1.
`
`This Complaint is filed by BASF Corporation ("BASF") and tJChicago Argonne,
`
`LLC ("Argonne") (collectively, "Complainants") under Section 337 of the Tariff Act of 1930, as
`
`amended, 19 U.S.C. § 1337, based on the unlawful importation into the United States, the sale
`
`for importation into the United States, and the sale within the United States after importation, by
`
`the proposed Respondents, of certain lithium metal oxide cathode materials, lithium-ion batteries
`
`containing same, and products with lithium-ion batteries containing same that infringe claims 1-
`
`4, 7, 8, 13, and 14 ofUnited States Patent No. 6,677,082 ("the '082 patent") and claims 1-4, 8, 9,
`
`and 17 of United States Patent No. 6,680,143 ("the '143 patent") (collectively, the "Asserted
`
`Patents"). Respondents have infringed the Asserted Patents directly, either literally or under the
`
`doctrine of equivalents, and indirectly through inducing infringement and/or contributory
`
`infringement.
`
`2.
`
`BASF is the world's leading chemical company, w'ith a portfolio ranging from
`
`chemicals, plastics, performance products, and crop protection to oil and gas. BASF combines
`
`economic success with environmental protection and social responsibility. BASF's products and
`
`solutions contribute to conserving resources, ensuring nutrition, and improving quality of life.
`
`To this end, BASF produces lithium metal oxide cathode materials for use in lithium-ion
`
`batteries, which are frequently used in mobile electronic devices, power tools, hybrid electric
`
`cars and electric cars. BASF makes those lithium metal oxide cathode materials under an
`
`exclusive license, subject to preexisting license grants, to the Asserted Patents.
`
`3.
`
`Argonne manages Argonne National Laboratory ("ANL") for
`
`the U.S.
`
`Department of Energy's Office of Science. Argonne is responsible for many advances in the
`
`1
`
`Page 9 of 40
`
`

`
`field of lithium-ion batteries, including those described and claimed in the Asserted Patents.
`
`Argonne is the owner and assignee of these patents. See Confidential Ex. 3; Confidential Ex. 4.
`
`4.
`
`The proposed Respondents Umicore N.Y. and Umicore USA Inc. (collectively,
`
`"Umicore") manufacture, import, sell for importation, and sell after importation, lithium metal
`
`oxide cathode material for use in lithium-ion batteries.
`
`5.
`
`The proposed Respondents Makita Corporation, Makita Corporation of America,
`
`and Makita U.S.A. Inc. (collectively, "Makita") import, sell for importation, sell after
`
`importation, service, and repair, among other things, lithium-ion batteries containing lithium
`
`metal oxide cathode materials, and products with lithium-ion batteries containing lithium metal
`
`oxide cathode materials. See Ex. 7, Makita USA- Accessory Details. Umicore's lithium metal
`
`oxide cathode material for use in lithium-ion batteries, Makita's lithium-ion batteries containing
`
`same, and Makita's products with lithium-ion batteries containing same are collectively the
`
`Accused Products. The Accused Products incorporate, without license, technology protected by
`
`the Asserted Patents, owned by Argonne, and licensed exclusively to BASF, subject to
`
`preexisting license grants. See Confidential Ex. 5; Confidential Ex. 6. The asserted patents and
`
`their asserted claims (independent claims in bold) are listed below:
`
`Patent Number
`
`Asserted Claims
`
`'082
`
`'143
`
`1- 4, 7, 8, 13, and 14
`
`1-4, 8, 9, and 17
`
`6.
`
`A certified copy of the '082 patent is included as Ex. L A certified copy of the
`
`assignment record for the '082 patent is included as Ex. 3. A certified copy of the '143 patent is
`
`included as Ex. 2. A certified copy of the assignment record for the '143 patent is included as
`
`Ex. 4.
`
`2
`
`Page 10 of 40
`
`

`
`7.
`
`A domestic industry as required by 19 U.S.C. § 1337(a)(2) and (3) exists in the_
`
`United States relating to the technology protected by the Asserted Patents, including substantial
`
`investment and expenditures of Argonne and BASF, and substantial investment in the
`
`exploitation of the inventions claimed in the Asserted Patents, including through engineering,
`
`research and development, and licensing.
`
`8.
`
`Complainants seek as relief a permanent limited exclusion order under 19 U.S.C.
`
`§ 1337(d) barring from entry into the United States directly-infringing lithium-ion batteries and
`
`products containing the same manufactured .or sold by or on behalf of Makita. Complainants
`
`also seek as relief a permanent limited exClusion order under 19 U.S.C. § 1337(d) barring from
`
`entry into the United States indirectly-infringing lithium metal oxide cathode materials
`
`manufactured or sold by or on behalf of Umicore. Complainants further seek as relief a
`
`permanent cease and desist order under 19 U.S.C. § 1337(f) prohibiting Respondents from
`
`marketing, distributing, selling, offering for sale, warehousing inventory for disttjbution, or
`
`otherwise transferring or bringing into the United States, infringing lithium metal 'oxide cathode
`
`materials, lithium-ion batteries containing same, and products with lithium-ion batteries
`
`containing the same.
`
`II.
`
`COMPLAINANTS
`
`9.
`
`Complainant BASF Corporation ("BASF") is a Delaware corporation with a
`
`principal place ofbusiness at 100 Campus Drive, Florham Park, New Jersey 07932. BASF is the
`
`Exclusive Licensee of the Asserted Patents. See ConfidentialEx. 5; Confidential Ex. 6.
`
`10.
`
`Complainant Argonne is an Illinois corporation with a principal place of business
`
`at 9700 S. Cass Avenue, Lemont, Illinois 60439. Argonne is the operator of Argonne National
`
`Laboratory under its U.S. Department of Energy Contract No. DE-AC02-06CH11357. See
`
`3
`
`Page 11 of 40
`
`

`
`Confidential Exhibit 8. Argonne is the assignee of, and owns, the Asserted Patents. See Ex. 3;
`
`Ex. 4.
`
`11.
`
`BASF is in the business of manufacturing, developing, and selling lithium metal
`
`oxide cathode materials for use in lithium-ion batteries.
`
`12.
`
`In May 2009, BASF licensed Argonne's patents to be able to lawfully engage in
`
`activities in the United States relating to lithium-ion batteries. The inventions disclosed in the
`
`Asserted Patents were developed by Argonne researchers. Argonne operates a multidisciplinary
`
`science and engineering research center established to address national challenges in fields such
`
`as clean energy and technology. See Ex. 9, ANL About Argonne website. One of Argonne's
`
`research and development focuses is on advanced lithium battery technologies. See Ex. 1 0, ANL
`
`Transportation Technology R& D Center, Advanced Battery Research, Development, and
`
`Testing. In 1976, Argonne National Laboratory became the home of the Department of Energy's
`
`first independent battery testing laboratory. See id. Since then, Argonne has researched,
`
`developed, tested, and evaluated advanced battery technologies from cathode active materials to
`
`cells to complete battery systems. See id. In 2007, Argonne initiated several material research
`
`and development projects related to lithium batteries and materials used therein. See id.
`
`13.
`
`Complainants have substantial operations in the United States, including with
`
`respect to the Asserted Patents. Complainant BASF has research and development, testing and
`
`engineering, manufacturing, sales and marketing, and business offices in: Iselin, NJ; Florham
`
`Park, NJ; Rochester Hills, MI; Troy, MI; Louisville, KY; Beachwood, OH; and Elyria, OH. See,
`
`e.g., Ex. 35, "Fact Sheet- Beachwood," BASF website; Ex. 48, "Fact Sheet- Elyria," BASF
`
`website; Ex. 59, "Fact Sheet- Louisville," BASF website; Ex. 49, "Customer Service," BASF
`
`4
`
`Page 12 of 40
`
`

`
`website; Ex. 47, "Fact Sheet- Iselin," BASF website. Complainant Argonne has research and
`
`development, testing, and business offices in Lemont, IL. Confidential Ex. 8 ~ 2.
`
`14.
`
`Complainant Argonne is the f\lll owner of all rights and title of the Asserted
`
`Patents. See Ex. 3; Ex. 4. Complainant BASF is the exclusive licensee of the Asserted Patents.
`
`See Confidential Ex. 5; Confidential Ex. 6.
`
`15.
`
`Complainants have made· and continue to make significant investment in the
`
`design and development of products protected by the Asserted Patents. In the United States,
`
`Complainants, their partners, and their contractors exploit the technology covered by the
`
`Asserted Patents by various activities, including research and development, engineering,
`
`manufacturing, licensing, and sales, as discussed more fully below.
`
`In conp.ection with the
`
`exploitation of these technologies, Complainants have made significant investments in the
`
`United States in facilities, equipment, labor,· capital, and research and development as described
`
`in Section X below.
`
`III.
`
`THE PROPOSED RESPONDENTS
`
`16.
`
`On information and belief, Umicore S.A./N.V. is a company organized under the
`
`I
`laws of Belgium, with a principal place of business at Broekstraat 31, 1 000 Brussels, Belgium.
`
`See Ex. 54, Umicore NV Hoover Report; Ex. 55, Umicore S.A. Capital IQ Report; Ex. 56,
`
`Umicore S.A./N.V. Corporate Affiliations Report. Also on information and belief, Umicore
`
`S.A., Umicore N.Y., and Umicore S.A./N.V. refer to the same entity. Ex. 56, Umicore S.A./N.V.
`
`Corporate Affiliations Report. On information and belief, it is custom in Belgium for entities to
`
`use the S.A. and N.Y. designations interchangeably, as one is the French designation and the
`
`other the Dutch designation, respectively. On information and belief, Umicore S.A./N.V.
`
`manufactures, designs, develops, markets, offers for sale, sells for importation, and exports to the
`
`United States materials for lithium metal oxide batteries, including for lithium metal oxide
`
`5
`
`Page 13 of 40
`
`

`
`batteries for use in power tools. See Ex. 11, Umicore, Rechargeable Batteries; Ex. 62, Umicore
`
`Rechargeable Battery Materials; Ex. 63, Umicore, Power Tools; Ex. 67, Umicore Presentation,
`
`"Rechargeable Battery Materials," June, 2014.
`
`17.
`
`On information and belief, Umicore USA Inc. is a Delaware corporation with a
`
`principal place of business at 3600 Glenwood Avenue, Suite 250, Raleigh, North Carolina
`
`27612. See Ex. 57, Umicore USA Inc. Hoover Report; Ex. 58, Umicore USA Inc. Capital IQ
`
`Report. On information and belief, Umicore USA Inc. designs, manufactures, develops,
`
`markets, offers for sale, recycles, imports into to the United States, and sells cathode materials
`
`for lithium-ion batteries. See, e.g., Ex. 58, Umicore USA Inc. Capital IQ Report; Ex. 24, Kurt
`
`Vandeputte, Umicore Presentation, "The pivotal role of cathode materials in a growing Li-ion
`
`battery market," Batteries 2013- Nice, slide 5; Ex. 22, Kurt Vandeputte, Umicore Presentation,
`
`"Key developments in Rechargeable Battery Materials," Capital Markets Event, Seoul, South
`
`Korea, May 24, 2012, slide 9.
`
`18.
`
`On information and belief, Makita Corporation is a company organized under the
`
`laws of Japan, with a principal place of business at 3-11-8, Sumiyoshicho, 446-0072 Anjo 446-
`
`0072 Aichi, Japan. See Ex. 12, Makita Corporation Hoover Report. On information and belief,
`
`Makita Corporation designs, manufactures, develops, imports, sells for importation into the
`
`United States, offers for sale, sells, and/or uses in the United States after importation products
`
`containing lithium-ion batteries and lithium-ion battery packs.
`
`19.
`
`On information and belief, Makita Corporation of America is a Georgia
`
`corporation with a principal place of business at 2650 Buford Highway, Buford, Georgia 30518.
`
`See Ex. 13, Makita Corporations of America Hoover Report. On information and belief, Makita
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`Corporation of America manufactures and sells products containing lithium-ion batteries, such as
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`cordless power tools, and lithium-ion battery packs for products.
`
`20.
`
`On information and belief, Makita U.S.A. Inc. is a California corporation with a
`
`principal place ofbusiness at 14930 Northam Street, La Mirada, California 90638. See Ex. 14,
`
`Makita USA Hoover Report. On information and belief, Makita U.S.A. Inc. imports into the
`
`United States, offers for sale, sells, and/or uses in the United States after importation, repairs, and
`
`sells products containing lithium-ion batteries, such as cordless power tools, and lithium-ion
`
`battery packs for products. See, e.g., Ex. 15, Makita, Service Network.
`
`21.
`
`On
`
`information and belief, Respondents collectively design, develop,
`
`manufacture, sell for importation, export, import into the United States, sell after importation
`
`into the United States, lithium metal oxide cathode materials for the production of lithium-ion
`
`batteries, lithium-ion batteries containing the sallie material, and products with lithium-ion
`
`batteries containing the same material, as further described below.
`
`IV.
`
`THE TECHNOLOGY AND PRODUCTS AT ISSUE
`
`22.
`
`The technology at issue relates generally to certain lithium metal oxide cathode
`
`materials used in the cathode oflithium-ion batteries.
`
`23.
`
`Batteries are devices that store energy electrochemically. Every battery has a
`
`positive electrode, or cathode, a negative electrode, or anode, a separator between the two, and
`
`an electrolyte.
`
`24.
`
`Lithium batteries are rechargeable through the movement of lithium-ion out of the
`
`cathode and into the anode. The Asserted Patents include claims that are directed to lithium
`
`metal oxide cathodes, and cells and batteries containing the same.
`
`25. When constructed, most lithium-ion batteries contain one or more battery cells.
`
`The cells are typically manufactured to include anode materials such as carbon, or metal alloys
`
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`that are substantially free of lithium; the cathode materials contain the lithium. Cells may be
`
`used individually or assembled with and electrically interconnected to other cells in a body or
`.
`.
`casing. During charging, some of the lithium migrates from the cathode material through the
`
`electrolyte to the anode material. During discharging, some of the lithium migrates back from
`
`the anode through the electrolyte to the cathode material. Because the lithium migrates between
`
`the anode and the cathode, the cathode of a rechargeable lithium battery usually contains lithium
`
`in an amount that varies with the charge-discharge history of the lithium battery.
`
`26.
`
`Lithium metal oxides are used as cathode materials in rechargeable lithium-ion
`
`batteries. The cathode materials in the Asserted Patents relate to transition metal oxides in
`
`particular. A transition metal is commonly defined as any element in columns 3 through 12 on
`
`the periodic table. Examples of lithium transition metal oxides for use as cathode materials are
`
`lithium cobalt oxide ("LiCo02"), lithium manganese oxide ("LiMn204") and lithium nickel oxide
`
`("LiNi02"). The cathodes claimed by the Asserted Patents include lithium transition metal
`
`oxides having one or more transition metal, such as Mn, Ni and/or Co.
`
`27.
`
`Cathode materials also each have a particular crystal structure, which is the
`
`arrangement of the atoms in the material. A crystal structure is defined by a unit cell-a set of
`
`atoms arranged in a particular way-which is periodically repeated in three dimensions.
`
`Cathode materials such as LiM02 (where M is the transition metal Ni, Co, Mn, or some
`
`combination of the same) have a layered structure, wherein the transition metals occupy the
`
`octahedral sites. When excess lithium is added to a LiM02 material, the ex_cess lithium forms a
`
`second phase, called the LhM'03 phase (where M' consists of at least Mn, but may also include
`
`other transition metals such as Ni or Co.) This phase generally contains more Mn than the
`
`LiM02 phase and is sometimes referred to as "Mn-rich." The LhM'03 phase also has a layered
`
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`structure wherein the transition metals and the excess lithium occupy the octahedral sites. The
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`Asserted Patents claim cathode materials wherein the LiM02 and LhM'03 phases both exist.
`
`28.
`
`Rechargeable batteries having a lithium metal oxide cathode provide faster
`
`recharge capability and higher energy density (i.e., -higher capacity or run time) than other types
`
`of rechargeable batteries, such as Nickel Cadmium batteries and Nickel Metal Hydride batteries.
`
`The technology of the Asserted Patents provides advances in the art, including imparting
`
`improved structural stability or electronic conductivity to the high capacity electrode during
`
`electrochemical cycling, resulting in less capacity fade (i.e., capacity reduction over the life of
`
`the battery). The technology of the Asserted Patents allows the electrode to include excess
`
`lithium without sacrificing the stability thereof. The excess lithium is able to improve structural
`
`stability by driving the formation of the Li2M'03 phase.
`
`29.
`
`The products at issue are lithium metal oxide cathode materials,
`
`lithium-ion
`
`batteries containing the same, and products with lithium-ion batteries containing the same, such
`
`as power tools.
`
`30.
`
`Lithium-ion batteries using the technology of the Asserted Patents have a higher
`
`· capacity, are more stable, and show a reduced capacity fade.
`
`31.
`
`As discussed previously, the Accused Products are Respondents' lithium metal
`
`oxide cathode material for lithium-ion batteries, lithium-ion batteries containing these materials,
`
`and products containing these batteries, including power tools (for example, Makita's XFDOl
`
`18V 112" Driver-Drill Kit). Umicore's lithium metal oxide cathode material appears to be
`
`. marketed and sold under the Cellcore product group, including trade names Cellcore® MX
`
`and/or Cellcore® TX9. On information and belief, Makita's products contain lithium-ion
`
`batteries containing lithium metal oxide cathode materials supplied by Umicore. The Accused
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`Products are sold for importation into the United States, imported into the United States, sold
`
`after importation into the United States, and used within the United States by or on behalf of
`
`Respondents.
`
`V.
`
`THE PATENTS IN SUIT AND NONTECHNICAL DESCRIPTIONS OF THE
`INVENTIONS
`
`32.
`
`As set forth below, Argonne owns by assignment the entire right, title, and
`
`interest in and to each of the Asserted Patents. See Ex. 3; Ex. 4. BASF has an exclusive license
`
`to the Asserted Patents. See Confidential Ex. 5; Confidential Ex. 6.
`
`33.
`
`Pursuant to Commission Rule 21 0.12( c), four copies of the certified prosecution
`
`histories of each of the Asserted Patents have been submitted with this Complaint as Appendices
`
`A and B. Pursuant to Commission Rule 210.12(c), the cited references for each of the Asserted
`
`Patents also have been submitted with this Complaint as Appendices C and D.
`
`A.
`
`Nontechnical Description of the '082 Patent1
`
`34.
`
`U.S Patent No. 6,677,082, entitled "Lithium Metal Oxide Electrodes for Lithium
`
`Cells and Batteries" issued on January 13, 2004, to inventors Michael M. Thackeray, Christopher
`
`S. Johnson, Khalil Amine, and Jaekook Kim. The '082 patent expires on October 19, 2021. The
`
`'082 patent issued from U.S. Patent App. Ser. No. 09/887,842, filed on June 21, 2001, and was
`
`previously published as U.S. Patent Pub. No. 2002/0136954 on September 26, 2002. The '082
`
`patent claims priority to U.S. Provisional App. No. 60/213,618, filed on June 22, 2000.
`
`35.
`
`The ' 082 patent contains 16 claims, including 5 independent claims and 11
`
`dependent claims. Complainants assert that Respondents' lithium metal oxide cathode materials,
`
`lithium-ion batteries, products containing the same, and activities relating thereto infringe at least
`
`1 These descriptions and other non-technical descriptions within this Complaint are for illustrative purposes only.
`Nothing contained within this Complaint is intended to, either implicitly or explicitly, express any position regarding
`the proper construction of any claim of the Asserted Patents.
`
`10
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`claims 1-4, 7, 8, 13 and 14 of the '082 patent. Respondents have infringed the Asserted Patents ·
`
`directly, either literally or