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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No.
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`JURY DEMAND
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`MOLECULAR REBAR DESIGN,
`LLC AND BLACK DIAMOND
`STRUCTURES, LLC,
`
`
`
`Plaintiffs,
`
`v.
`
`LG CHEM, LTD., LG ENERGY
`SOLUTION, LTD., LG ENERGY
`SOLUTION MICHIGAN, INC., AND
`LG ELECTRONICS, INC.,
`
`
`
`Defendants.
`
`ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT
`
`NATURE OF ACTION
`
`1.
`
`Plaintiffs Molecular Rebar Design, LLC and Black Diamond Structures, LLC
`
`(collectively, “Plaintiffs”) file this Complaint for patent infringement under 35 U.S.C. § 271
`
`against LG Chem, Ltd., LG Energy Solution, Ltd., LG Energy Solution Michigan, Inc., and LG
`
`Electronics, Inc. (collectively, “Defendants”) and allege as follows:
`
`OVERVIEW
`
`2.
`
`This is an action for infringement of U.S. Patent Nos. 8,475,961 (“the ’961 Patent”),
`
`9,636,649 (“the ’649 Patent”), and 10,608,282 (“the ’282 Patent”) (collectively “the Asserted
`
`Patents”) under the patent laws of the United States, 35 U.S.C. §§ 1, et seq.
`
`3.
`
`Molecular Rebar Design, LLC (“MRD”), formed in 2012 and based in Austin,
`
`Texas, along with its affiliated predecessors going back to in or around 2009, recognized that there
`
`was a significant gap between the theoretical performance of carbon nanotubes (CNTs) and their
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`
`
`1
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 2 of 34 PageID #: 2
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`
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`commercial viability because of their poor dispersibility. MRD has bridged that gap with unique
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`capabilities to provide discrete, and optionally surface tailored carbon nanotubes.
`
`4.
`
`MRD, with
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`its extensive
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`laboratory capabilities and multi-disciplinary
`
`nanotechnology expertise, has developed and commercialized a breakthrough form of modified
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`CNTs called MOLECULAR REBAR® materials. These are the world’s first CNTs that were
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`substantially disentangled from the usual clumping and individualized through patent-protected
`
`processes which enable significantly enhanced performance for a myriad of high-value materials.
`
`MRD’s cutting-edge technologies are protected by over 35 U.S. patents and over 80 foreign
`
`patents.
`
`5.
`
`Example of bundled, non-discrete, multi-walled carbon nanotubes:
`
`6.
`
`Example of disaggregated, de-bundled, discrete, exfoliated multi-walled carbon
`
`
`
`nanotubes:
`
`
`
`2
`
`
`
`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 3 of 34 PageID #: 3
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`
`
`
`
`7.
`
`Black Diamond Structures, LLC (“BDS”), formed in 2014, is a global
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`nanotechnology leader partnering with manufacturers to create next generation world-class
`
`batteries. BDS’s products are based on MRD’s proprietary MOLECULAR REBAR® technology.
`
`8.
`
`MRD is owner of the Asserted Patents, and BDS has an exclusive license to the
`
`Asserted Patents from MRD. MRD and BDS together possess all rights in the Asserted Patents to
`
`bring this lawsuit and seek all relief and damages for the patent infringement alleged herein.
`
`THE PARTIES
`
`9.
`
`MRD is a Delaware limited liability company with a principal place of business at
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`13477 Fitzhugh Rd, Austin, TX 78736.
`
`10.
`
`BDS is a Delaware limited liability company with a principal place of business at
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`12310 Trail Driver, Austin, TX 78737.
`
`11.
`
`On information and belief, Defendant LG Chem, Ltd. is a South Korean corporation
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`with its principal place of business at 128 Yeoui-daero, Yeongdeungpo-gu, Seoul 7336, South
`
`Korea.
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`
`
`3
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 4 of 34 PageID #: 4
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`
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`12.
`
`On information and belief, Defendant LG Energy Solution, Ltd. (“LGES”) is a
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`corporation organized under the laws of South Korea, having a principal place of business at 108
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`Yeouidaero, Yeongdeungpo-gu, Seoul 07335, South Korea.
`
`13.
`
`On information and belief, Defendant LG Energy Solution Michigan, Inc.
`
`(“LGESM”) is a corporation organized and existing under the laws of the State of Delaware and
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`maintains its principal place of business at 1 LG Way, Holland, Michigan 49423.
`
`14.
`
`On information and belief, LGESM is a wholly owned subsidiary of LGES and was
`
`formerly named LG Chem Michigan, Inc., until its name was changed to LG Energy Solution
`
`Michigan, Inc. on or about December 1, 2020.
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`15.
`
`On information and belief, LGESM may be served with process through its
`
`registered agent Corporation Service Company at 251 Little Falls Drive, Wilmington, Delaware
`
`19808.
`
`16.
`
`Defendants LG Chem, Ltd., LG Energy Solution, Ltd., and LG Energy Solution
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`Michigan, Inc. are referred to collectively as “LG Chem.”
`
`17.
`
`On information and belief, Defendant LG Electronics, Inc. (“LGE”) is a South
`
`Korean corporation with a principal place of business at LG Twin Towers, 128 Yeoui-daero,
`
`Yeongdungpo-gu, Seoul, 07366, South Korea.
`
`JURISDICTION AND VENUE
`
`18.
`
`This Court has exclusive subject matter jurisdiction over this case under 28 U.S.C.
`
`§§ 1331 and 1338.
`
`19.
`
`Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(b). LG Chem,
`
`Ltd., LG Energy Solution, Ltd., and LG Electronics, Inc. are foreign entities, and thus, venue is
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`proper in this judicial district. On information and belief, all of the Defendants have committed
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`
`
`4
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 5 of 34 PageID #: 5
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`
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`acts of infringement in this judicial district and have purposefully transacted business involving
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`the accused products in the United States and this judicial district.
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`20.
`
`This Court has personal jurisdiction over the Defendants because: (1) Plaintiffs’
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`claims arise in whole or in part from Defendants’ conduct in the State of Delaware; (2) LG Chem,
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`Ltd. has sought the protection and benefit from the laws of the State of Delaware and regularly
`
`conducts business in the State of Delaware by incorporating subsidiaries, including LG Energy
`
`Solution Michigan, Inc., in the State of Delaware; (3) all of the Defendants regularly conduct
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`business throughout the United States, including the State of Delaware, and contract to supply
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`services or things in Delaware; (4) all of the Defendants have contacts purposefully directed at the
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`United States and the State of Delaware and have continuous and systematic contacts with the
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`United States and the State of Delaware; (5) all of the Defendants have placed infringing products
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`into the stream of commerce through an established distribution channel with the expectation or
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`knowledge that they will be purchased by consumers in the United States and the State of
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`Delaware; and (6) all of the Defendants have caused tortious injury in the State of Delaware.
`
`21.
`
`Defendant LG Chem, Ltd. maintains a United States version of its website at
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`https://www.lgchem.com/us/main. On this website, LG Chem, Ltd. provides information
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`regarding its activities and products, including LG Chem, Ltd.’s Lithium Batteries, which include
`
`the infringing batteries and systems. On information and belief, LG Chem, Ltd.’s website is
`
`directed to marketing, offering for sale, and sales of its products and services in the United States
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`and in the State of Delaware.
`
`22.
`
`Defendant LG Electronics, Inc. maintains a United States version of its website at
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`https://www.lg.com/us. On this website, LG Electronics, Inc. provides information regarding its
`
`activities and products. On information and belief, LG Electronics, Inc.’s website is directed to
`
`
`
`5
`
`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 6 of 34 PageID #: 6
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`
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`marketing, offering for sale, and sales of its products and services in the United States and in the
`
`State of Delaware.
`
`23.
`
`Defendant LG Energy Solution, Ltd. maintains an English version of its website at
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`https://www.lgensol.com/en. On this website, LGES provides information regarding its activities
`
`and products, including information relating to its manufacturing facility in Holland, Michigan.
`
`On information and belief, LGES’s website is directed to marketing, offering for sale, and sales of
`
`its products and services in the United States and in the State of Delaware.
`
`24.
`
`Defendants LG Chem, Ltd., LG Energy Solution, Ltd., and LG Electronics, Inc.
`
`have also derived benefits from the laws of the United States. For example, Defendants LG Chem,
`
`Ltd., LG Energy Solution, Ltd., and LG Electronics, Inc. have filed litigations in the United States,
`
`including based on claims for patent infringement. On information and belief, Defendants LG
`
`Chem, Ltd., LG Energy Solution, Ltd., and LG Electronics, Inc. derive substantial revenues from
`
`their regularly conducted business activities throughout the United States and the State of
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`Delaware. On information and belief, Defendants LG Chem, Ltd., LG Energy Solution, Ltd., and
`
`LG Electronics, Inc. receive substantial revenue from their activities and the activities of their U.S.
`
`subsidiaries in the United States. On information and belief, Defendants LG Chem, Ltd., LG
`
`Energy Solution, Ltd., and LG Electronics, Inc. are in regular contact with their subsidiaries and
`
`affiliates in the United States and direct communication into the United States.
`
`THE ASSERTED PATENTS
`
`25.
`
`On July 2, 2013, the United States Patent and Trademark Office duly and legally
`
`issued
`
`the ’961 Patent,
`
`titled “HIGH PERFORMANCE ENERGY STORAGE AND
`
`COLLECTION DEVICES CONTAINING EXFOLIATED MICROTUBULES AND
`
`SPATIALLY CONTROLLED ATTACHED NANOSCALE PARTICLES AND LAYERS.” The
`
`’961 Patent has a filing date of December 14, 2010 and claims benefit to a provisional filing date
`6
`
`
`
`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 7 of 34 PageID #: 7
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`
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`filed on December 18, 2009. Plaintiffs own all rights to the ’961 Patent necessary to bring this
`
`action, including the exclusive right to recover for past infringement. A true and correct copy of
`
`the ’961 Patent is attached as Exhibit 1 hereto.
`
`26.
`
`The ’961 Patent describes energy storage or collection devices and methods for
`
`making such devices having electrode materials containing exfoliated carbon nanotubes with
`
`attached electro- or photoactive nanoscale particles or layers. The exfoliated carbon nanotubes and
`
`attached nanoscale particles or layers may be fabricated by methods such as coating, solution or
`
`casting or melt extrusion to form electrodes. Electrolytes may also be used for dispersing
`
`nanotubes and also in a polymeric form to allow melt fabrication methods.
`
`27.
`
`On May 2, 2017, the United States Patent and Trademark Office duly and legally
`
`issued
`
`the ’649 Patent,
`
`titled “DISPERSIONS COMPRISING DISCRETE CARBON
`
`NANOTUBE FIBERS.” The ’649 Patent has a filing date of October 7, 2016 and a priority filing
`
`date of December 14, 2010. Plaintiffs own all rights to the ’649 Patent necessary to bring this
`
`action, including the exclusive right to recover for past infringement. A true and correct copy of
`
`the ’649 Patent is attached as Exhibit 2 hereto.
`
`28.
`
`The ’649 Patent describes carbon nanotubes as composites with materials such as
`
`elastomers, thermosets and thermoplastics or aqueous dispersions of open-ended carbon nanotubes
`
`with additives. A further feature of this invention relates to the development of a concentrate of
`
`carbon nanotubes with an elastomer wherein the concentrate can be further diluted with an
`
`elastomer and other polymers and fillers using conventional melt mixing equipment.
`
`29.
`
`On March 31, 2020, the United States Patent and Trademark Office duly and legally
`
`issued the ’282 Patent, titled “BINDERS, ELECTROLYTES AND SEPARATOR FILMS FOR
`
`ENERGY STORAGE AND COLLECTION DEVICES USING DISCRETE CARBON
`
`
`
`7
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 8 of 34 PageID #: 8
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`
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`NANOTUBES.” The ’282 Patent has a filing date of January 26, 2018 and an effective filing date
`
`of June 21, 2012. Plaintiffs own all rights to the ’282 Patent necessary to bring this action,
`
`including the exclusive right to recover for past infringement. A true and correct copy of the ’282
`
`Patent is attached as Exhibit 3 hereto.
`
`30.
`
`The ‘282 Patent describes in various embodiments an improved binder
`
`composition, electrolyte composition and a separator film composition using discrete carbon
`
`nanotubes. Their methods of production and utility for energy storage and collection devices, like
`
`batteries, capacitors and photovoltaics, is described. The binder, electrolyte, or separator
`
`composition can further comprise polymers. The discrete carbon nanotubes further comprise at
`
`least a portion of the tubes being open ended and/or functionalized. The utility of the binder,
`
`electrolyte or separator film composition includes improved capacity, power or durability in
`
`energy storage and collection devices. The utility of the electrolyte and or separator film
`
`compositions includes improved ion transport in energy storage and collection devices.
`
`GENERAL ALLEGATIONS
`
`Plaintiffs incorporate by reference the preceding paragraphs.
`
`The products that infringe one or more claims of the Asserted Patents include but
`
`31.
`
`32.
`
`are not limited to Defendants’ HG2, HG6, and MJ1 batteries (“Accused Products”). See, e.g.,
`
`Exhibit 4 attached hereto (HG2 datasheet); Exhibit 5 attached hereto (HG6 datasheet); Exhibit 6
`
`attached hereto (MJ1 datasheet).
`
`33.
`
`On information and belief, LG Chem has and continues to directly infringe one or
`
`more claims of each of the Asserted Patents in violation of 35 U.S.C. § 271(a).
`
`34.
`
`On information and belief, LG Chem has and continues to indirectly infringe and/or
`
`contribute to the infringement of one or more claims of each of the Asserted Patents in violation
`
`of 35 U.S.C. § 271 (b) and (c) at least based on its activities in Michigan.
`8
`
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 9 of 34 PageID #: 9
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`35.
`
`On information and belief, LGE has and continues to directly and indirectly infringe
`
`one or more claims of each of the Asserted Patents in violation of 35 U.S.C. §§ 271(a), (b), and
`
`(c).
`
`36.
`
`Defendants are knowledgeable about the Asserted Patents and their infringing acts
`
`at least as of the date on which they are properly served with this Complaint.
`
`37.
`
`Defendants’ acts of infringement have caused damage to Plaintiffs. Plaintiffs are
`
`entitled to recover from Defendants the past damages sustained by Plaintiffs as a result of
`
`Defendants’ wrongful acts in an amount to be proven at trial. In the event Defendants are not
`
`enjoined from future infringing activity, Plaintiffs are also entitled to recover from Defendants a
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`compulsory future royalty payable on each infringing product made, used, or sold by Defendants
`
`following trial or that is not captured in the damages awarded to Plaintiffs.
`
`CLAIMS FOR PATENT INFRINGEMENT
`
`Plaintiffs incorporate by reference the preceding paragraphs.
`
`Plaintiffs identify below exemplary claims of the Asserted Patents to demonstrate
`
`38.
`
`39.
`
`infringement by exemplary products. However, the selection of exemplary claims and exemplary
`
`products should not be considered limiting, and additional infringing products and infringed claims
`
`of the Asserted Patents will be disclosed in compliance with the Court’s rules related to
`
`infringement contentions as discovery progresses.
`
`COUNT I: INFRINGEMENT OF THE ’961 PATENT
`
`Plaintiffs incorporate by reference the preceding paragraphs.
`
`On information and belief, LGE directly infringes, induces the infringement of, and
`
`40.
`
`41.
`
`contributes to the infringement of one or more claims of the ’961 Patent, including at least claim
`
`1, either literally or under the doctrine of equivalents.
`
`
`
`9
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 10 of 34 PageID #: 10
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`
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`42.
`
`On information and belief, LGE directly infringes the ’961 Patent by, for example,
`
`assembling, or causing to have assembled, one or more of the Accused Products for use in third
`
`party electric vehicles.
`
`43.
`
`On information and belief, LGE induces the infringement of the ’961 Patent by
`
`third parties, including without limitation automobile manufactures or other device makers, by
`
`actively encouraging third parties to make, use, offer to sell, sell, or import into the United States,
`
`for example, electric vehicles or other consumer electronics containing the infringing battery
`
`technologies. For example, LGE instructs, offers, or encourages third party automobile
`
`manufacturers to use one or more of the Accused Products in electric vehicles.
`
`44.
`
`On information and belief, LGE contributes to the infringement of the ’961 Patent
`
`by offering to sell or selling within the United States or importing into the United States infringing
`
`battery technologies for use in at least electric vehicles or other consumer electronics sold in the
`
`United States, knowing the infringing battery technologies to be especially-made components that
`
`have no substantial non-infringing use.
`
`45.
`
`On information and belief, LG Chem at least induces the infringement of one or
`
`more claims of the ’961 Patent, including at least claim 1, either literally or under the doctrine of
`
`equivalents.
`
`46.
`
`On information and belief, LG Chem induces LGE to infringe the ’961 Patent by
`
`instructing, offering, and encouraging LGE to use LG Chem’s infringing battery technologies in
`
`LGE products.
`
`47.
`
`On information and belief, LG Chem designs battery cells for the United States EV
`
`market and competes for business that it knows is directed to downstream products designated for
`
`the United States market. For example, LGES maintains a website specifically tailored for the
`
`
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`10
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 11 of 34 PageID #: 11
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`
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`United States and notes that it supplies automotive batteries for automobiles that are sold and
`
`offered for sale in the United States. See https://www.lgensol.com/en/business-automotive-battery
`
`(last accessed August 10, 2022).
`
`48.
`
`On information and belief, LG Chem has directly infringed and/or contributed to
`
`the infringement of, and will continue to infringe and/or contribute to the infringement of, one or
`
`more claims of the ’961 Patent at least based on its activities in Michigan. See, e.g., LG Chem, Ltd.
`
`v. SK Innovation Co., Ltd., 1:19-cv-00776 (D. Del. April 29, 2019), Complaint, ¶ 29 (“LGCMI
`
`also has research and development, testing and engineering, manufacturing, sales and marketing,
`
`and business offices in Troy, Michigan, where it has invested many millions of dollars and employs
`
`hundreds of workers. Through its facilities in Michigan, LGC supplies millions of battery cells
`
`each year to automotive manufacturers including General Motors and Chrysler.”); LG Energy
`
`Solution, Ltd. et al. v. SK Innovation Co., Ltd. et al., 19-cv-1805-CFC, D.I. 12-1 (D. Del. Jan. 5,
`
`2021) (“LGES has extensive involvement in the U.S. market with its innovative battery
`
`technology. In fact, LGES and its subsidiary LG Energy Solution Michigan [,] Inc. [ ] supply,
`
`through plants in Michigan[,] millions of battery cells to U.S. companies like General Motors and
`
`Chrysler. For example, LGESMI has invested hundreds of millions of dollars in a facility in
`
`Holland, Michigan, which employs hundreds of workers making lithium-ion batteries for electric
`
`vehicles (EVs).”).
`
`49.
`
`Further, on information and belief, LG Chem contributes to the infringement of the
`
`’961 Patent by offering to sell or selling within the United States or importing into the United
`
`States infringing battery technologies for use in at least electric vehicles or other consumer
`
`electronics sold in the United States, knowing the infringing battery technologies to be especially-
`
`made
`
`components
`
`that
`
`have
`
`no
`
`substantial
`
`non-infringing
`
`use.
`
`See,
`
`e.g.,
`
`
`
`11
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 12 of 34 PageID #: 12
`
`
`
`https://www.lgchem.com/company/company-information/global-network/overseas-
`
`corporation/america (last accessed August 29, 2022).
`
`50.
`
`Defendants are knowledgeable about the ’961 Patent and infringing acts alleged
`
`herein at least as of the date on which they are served with this Complaint.
`
`51.
`
`Defendants’
`
`infringing acts have been without
`
`the permission, consent,
`
`authorization, or license of Plaintiffs.
`
`52.
`
`Claim 1 of the ’961 Patent recites as follows:
`
`1. An energy storage and collection device comprising:
`
`a) at least two electrodes;
`
`b) at least one of the electrodes containing carbon or mineral nanotubes that have
`
`been exfoliated from their as-synthesized state and have attached electroactive or
`
`photo active nanoscale particles or layers;
`
`c) at least two current collectors, each in contact with an electrode, or the electrode
`
`also functions as the current collector; and
`
`d) optionally an insulator.
`
`53.
`
`54.
`
`Defendants, by the Accused Products, infringe at least claim 1 of the ’961 Patent.
`
`Each of the Accused Products is an energy storage and collection device.
`
`
`
`LG HG2
`
`
`
`
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`12
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 13 of 34 PageID #: 13
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`
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`
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`LG HG6
`
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`LG MJ1
`
`
`
`
`
`
`
`55.
`
`The Accused Products have at least two electrodes, namely, for example, cathode
`
`active materials laminated on to aluminum current collectors and anode active materials laminated
`
`on to copper current collectors, with tabs protruding from opposite ends of the cylinder.
`
`LG HG2
`
`
`
`
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`13
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 14 of 34 PageID #: 14
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`LG HG6
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`
`
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`LG MJ1
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`
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`56.
`
`At least one of the electrodes of each of the Accused Products contain carbon or
`
`mineral nanotubes (reflected by the blue highlighted regions in the below scanning electron
`
`microscope (SEM) images).
`
`
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`
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`14
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 15 of 34 PageID #: 15
`Case 1:22-cv-01130-UNA Document1 Filed 08/29/22 Page 15 of 34 PagelD #: 15
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`LG HG2
`
`1pm
`SEM
`
`ID1_Cath 7/7/2021
`WD 9.9mm 11:10:58
`
`LG HG6
`
`
`
`
`
`WD 10.0mm 10:52:18
`
`x10,000
`
`5.0kV LED
`
`¥
`
`BS ge
`ID2_Cath 7/14/2021
`
`15
`15
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`
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`
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 16 of 34 PageID #: 16
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`LG MJ1
`
`57.
`
`The aforementioned CNTs of the Accused Products have been exfoliated (de-
`
`
`
`
`
`
`
`
`aggregated, separated, individualized) as shown by the white circled regions in the below SEM
`
`images.
`
`LG HG2
`
`
`
`
`
`
`
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`16
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`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 17 of 34 PageID #: 17
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`
`
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`
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`
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`LG HG6
`
`LG MJ1
`
`
`
`
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`58.
`
`The aforementioned CNTs have attached electroactive or photo active nanoscale
`
`particles or layers as shown by the white circled regions in the below SEM images.
`
`
`
`17
`
`
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 18 of 34 PageID #: 18
`Case 1:22-cv-01130-UNA Document1 Filed 08/29/22 Page 18 of 34 PagelD #: 18
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`LG HG2
`
`WD 9.9mm 11:18:32 x20 ,000
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`x50, 000
`
`5.0kV LED
`
`100nm ID1_Cath 7/7/2021
`au
`
`
`
`-
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`LG HG6
`
`5.0KV LED
`
`
`
`18
`18
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 19 of 34 PageID #: 19
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`LG MJ1
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`59.
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`The Accused Products have at least two current collectors – e.g., the anode (copper,
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`orange/shiny) and the cathode (aluminum, silver/shiny).
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`LG HG2
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`19
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 20 of 34 PageID #: 20
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`LG HG6
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`LG MJ1
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`60.
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`The Accused Products use electrodes laminated (deposited as a liquid slurry and
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`dried) to the current collector (anode – copper, cathode – aluminum).
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`61.
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`The Accused Products have an insulator functioning to physically distance the
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`anode and cathode electrodes (white wrapping in images above).
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`COUNT II: INFRINGEMENT OF THE ’649 PATENT
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`Plaintiffs incorporate by reference the preceding paragraphs.
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`On information and belief, LGE directly infringes, induces the infringement of, and
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`62.
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`63.
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`contributes to the infringement of one or more claims of the ’649 Patent, including at least claim
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`1, either literally or under the doctrine of equivalents.
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`64.
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`On information and belief, LGE directly infringes the ’649 Patent by, for example,
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`assembling, or causing to have assembled, one or more of the Accused Products for use in third
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`party electric vehicles.
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`20
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 21 of 34 PageID #: 21
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`65.
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`On information and belief, LGE induces the infringement of the ’649 Patent by
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`third parties, including without limitation automobile manufactures, by actively encouraging third
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`parties to make, use, offer to sell, sell, or import into the United States, electric vehicles containing
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`the infringing battery technologies. For example, LGE instructs, offers, or encourages third party
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`automobile manufacturers to use one or more of the Accused Products in electric vehicles.
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`66.
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`On information and belief, LGE contributes to the infringement of the ’649 Patent
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`by offering to sell or selling within the United States or importing into the United States infringing
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`battery technologies for use in at least electric vehicles sold in the United States, knowing the
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`infringing battery technologies to be especially-made components that have no substantial non-
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`infringing use.
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`67.
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`On information and belief, LG Chem at least induces the infringement of one or
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`more claims of the ’649 Patent, including at least claim 1, either literally or under the doctrine of
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`equivalents.
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`68.
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`On information and belief, LG Chem induces LGE to infringe the ’649 Patent by
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`instructing, offering, and encouraging LGE to use LG Chem’s infringing battery technologies in
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`LGE products.
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`69.
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`On information and belief, LG Chem designs battery cells for the United States EV
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`market and competes for business that it knows is directed to downstream products designated for
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`the United States market. For example, LGES maintains a website specifically tailored for the
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`United States and notes that it supplies automotive batteries for automobiles that are sold and
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`offered for sale in the United States. See https://www.lgensol.com/en/business-automotive-battery
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`(last accessed August 10, 2022).
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`21
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 22 of 34 PageID #: 22
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`70.
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`On information and belief, LG Chem has directly infringed and/or contributed to
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`the infringement of, and will continue to infringe and/or contribute to the infringement of, one or
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`more claims of the ’649 Patent at least based on its activities in Michigan. See, e.g., LG Chem, Ltd.
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`v. SK Innovation Co., Ltd., 1:19-cv-00776 (D. Del. April 29, 2019), Complaint, ¶ 29 (“LGCMI
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`also has research and development, testing and engineering, manufacturing, sales and marketing,
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`and business offices in Troy, Michigan, where it has invested many millions of dollars and employs
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`hundreds of workers. Through its facilities in Michigan, LGC supplies millions of battery cells
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`each year to automotive manufacturers including General Motors and Chrysler.”); LG Energy
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`Solution, Ltd. et al. v. SK Innovation Co., Ltd. et al., 19-cv-1805-CFC, D.I. 12-1 (D. Del. Jan. 5,
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`2021) (“LGES has extensive involvement in the U.S. market with its innovative battery
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`technology. In fact, LGES and its subsidiary LG Energy Solution Michigan [,] Inc. [ ] supply,
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`through plants in Michigan[,] millions of battery cells to U.S. companies like General Motors and
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`Chrysler. For example, LGESMI has invested hundreds of millions of dollars in a facility in
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`Holland, Michigan, which employs hundreds of workers making lithium-ion batteries for electric
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`vehicles (EVs).”).
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`71.
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`Further, on information and belief, LG Chem contributes to the infringement of the
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`’961 Patent by offering to sell or selling within the United States or importing into the United
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`States infringing battery technologies for use in at least electric vehicles or other consumer
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`electronics sold in the United States, knowing the infringing battery technologies to be especially-
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`made
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`components
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`that
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`have
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`no
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`substantial
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`non-infringing
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`use.
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`See,
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`e.g.,
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`https://www.lgchem.com/company/company-information/global-network/overseas-
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`corporation/america (last accessed August 29, 2022).
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`22
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 23 of 34 PageID #: 23
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`72.
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`Defendants are knowledgeable about the ’649 Patent and infringing acts alleged
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`herein at least as of the date on which they are served with this Complaint.
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`73.
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`Defendants’
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`infringing acts have been without
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`the permission, consent,
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`authorization, or license of Plaintiffs.
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`74.
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`Claim 1 of the ’649 Patent recites as follows:
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`1. A dispersion comprising a plurality of oxidized, discrete carbon nanotubes and
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`at least one additive, wherein the oxidized, discrete carbon nanotubes have an
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`aspect ratio of 25 to 500, are multiwall, and are present in the range of greater than
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`zero to about 30% by weight based on the total weight of the dispersion.
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`75.
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`76.
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`Defendants, by the Accused Products, infringe at least claim 1 of the ’649 Patent.
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`The Accused Products contain a plurality of oxidized, discrete carbon nanotubes as
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`reflected by the white circled regions in the below SEM image.
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`77.
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`Each of the Accused Products have cathodes with an added component (“additive”)
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`that is in composition with the nanotubes, where the oxidized, discrete carbon nanotubes have an
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`23
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 24 of 34 PageID #: 24
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`aspect ratio of 25 to 500 and are multiwall, as shown by the white circled regions in the below
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`SEM image.
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`78.
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`The nanotubes present in the Accused Products are present in the range of greater
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`than zero to about 30% by weight based on the total weight of the dispersion. On information and
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`belief, the nanotubes in the Accused Products are present in an amount of less than about 10% of
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`the cathode.
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`79.
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`80.
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`COUNT III: INFRINGEMENT OF THE ’282 PATENT
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`Plaintiffs incorporate by reference the preceding paragraphs.
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`On information and belief, LGE directly infringes, induces the infringement of, and
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`contributes to the infringement of one or more claims of the ’282 Patent, including at least claim
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`1, either literally or under the doctrine of equivalents.
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`81.
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`On information and belief, LGE directly infringes the ’282 Patent by, for example,
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`assembling, or causing to have assembled, one or more of the Accused Products for use in third
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`party electric vehicles.
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`24
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`Case 1:22-cv-01130-UNA Document 1 Filed 08/29/22 Page 25 of 34 PageID #: 25
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`82.
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`On information and belief, LGE induces the infringement of the ’282 Patent by
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`third parties, including without limitation automobile or consumer electronics manufactures, by
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`actively encouraging third parties to make, use, offer to sell, sell, or import into the United States,
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`electric vehicles containing the infringing battery technologies. For example, LGE instructs, offers,
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`or encourages third party automobile manufacturers to use one or more of the Accused Products
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`in electric vehicles.
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`83.
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`On information and belief, LGE contributes to the infringement of the ’282 Patent
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`by offering to sell or selling within the United States or importing into the United States infringing
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`battery technologies for use in at least electric vehicles sold in the United States, knowing the
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`infringing battery technologies to be especially-made components that have no substantial non-
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`infringing use.
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`84.
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`On information and belief, LG Chem at least induces the infringement of one or
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`more claims of the ’282 Patent, including at least claim 1, either literally or under the doctrine of
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`equivalents.
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`85.
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`On information and belief, LG Chem induces LGE to infringe the ’282 Patent by
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`instructing, offering, and encouraging LGE to use LG Chem’s infringing battery technologies in
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`LGE products.
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`86.
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`On information and belief, LG Chem designs battery cells for the United States EV
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`market and competes for business that it knows is directed to downstream products designated for
`
`the United States market. For example, LGES maintains a website specifically tailored for the
`
`United States and notes that it supplies automotive batteries for automobiles that are sold and
`
`offered for sale in the United States. See https://www.lgensol.com/en/bu