IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ASCEND ELEMENTS, INC.,
`Petitioner,
`
`v.
`
`DUESENFELD GMBH,
`Patent Owner.
`_____________
`
`Case No. PGR2025-00037
`
`U.S. Patent No. 12,119,463
`_____________
`
`PETITION FOR POST GRANT REVIEW
`OF U.S. PATENT NO. 12,119,463
`
`
`
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`
`
`
`
`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
`I.
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8 ................................ 2
`A.
`Real Party-In-Interest ............................................................................ 2
`B.
`Related Matters ..................................................................................... 3
`C.
`Lead and Back-up Counsel, and Service Information .......................... 3
`III. PAYMENT OF FEES .................................................................................... 4
`IV. REQUIREMENTS FOR POST-GRANT REVIEW .................................. 4
`A.
`Grounds for Standing ............................................................................ 4
`B.
`Identification of Challenge ................................................................... 4
`The Specific Art on Which the Challenge is Based .............................. 5
`1.
`Statutory Grounds on Which the Challenge is Based ........................... 6
`2.
`BACKGROUND ........................................................................................... 6
`V.
`Summary of the '463 Patent .................................................................. 6
`A.
`Prosecution History of the '463 Patent .................................................. 9
`B.
`VI. LEVEL OF ORDINARY SKILL IN THE ART ....................................... 10
`VII.
`CLAIM CONSTRUCTION .................................................................... 11
`VIII. PRIOR ART OVERVIEW ...................................................................... 12
`Tomioka (Japanese Patent Application Publication No. JPH10255861)
`A.
`
`12
`B.
`Hanisch (U.S. Patent Application Publication No. US 2014/0290438
`A1)
`13
`
`
`
`ii
`
`

`

`E.
`
`F.
`
`
`D.
`
`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`Yosuke (Japanese Patent Application Publication No.
`C.
`JP2016080284A) ..................................................................................................... 15
`1. Motivation to Combine Yosuke with Tomioka or Hanisch ................. 15
`Hayashi (U.S. Patent No. 9,843,077) .................................................. 18
`1. Motivation to Combine Hayashi with Tomioka or Hanisch ............... 20
`LithoRec (Kwade et al. LithoRec: Recycling Lithium-ion Batteries) . 25
`1. Motivation to Combine LithoRec with Tomioka or Hanisch ............. 26
`Perry (Perry et al., Perry's Chemical Engineers' Handbook (7th ed.))
`28
`1. Motivation to Combine Perry with Hanisch or Tomioka .................... 29
`IX. GROUNDS OF UNPATENTABILITY UNDER §§ 103, 112 ................... 31
`A.
`Ground 1: Claims 1-3, 8, 10-12 Are Rendered Obvious by Tomioka 32
`Claim 1 ................................................................................................ 32
`1.
`Claim 2: "The method according to claim 1, wherein: the organic
`2.
`solvent comprises dimethyl carbonate, or ethyl methylcarbonate, or both;
`and the drying process further continues the drying until the vaporizing
`removes at least 90 percent by weight of the dimethyl carbonate, or ethyl
`methylcarbonate, or both, from the electrolyte." ........................................... 39
`Claim 3: "The method according to claim 1, further comprising:
`3.
`capturing and condensing gases created from the vaporizing of organic
`carbonate in the electrolyte during the drying process." ............................... 40
`Claim 8: "The method according to claim 1, wherein: comminuting
`4.
`the used lithium batteries is performed within a container; and the drying is
`performed within the container." ................................................................... 40
`Claim 10: "The method according to claim 1, wherein comminuting of
`5.
`the used lithium batteries is configured such that the comminuted material
`includes components of comminuted material, and at least 90% by weight of
`the components of the comminuted material have a sieve size that is not
`more than 50 mm." ........................................................................................ 41
`
`
`
`iii
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`Claim 11: "The method according to claim 1, wherein receiving the
`6.
`used lithium-ion batteries further includes receiving used lithium-ion
`batteries that further comprise carrier foil and binder that binds active
`material to the carrier foil, and the temperature of the vaporizing pressure-
`temperature being not more than 80° C., lower than a decomposition
`temperature of the binder, and lower than the decomposition temperature of
`the fluorine salt." ........................................................................................... 43
`Claim 12: "The method according to claim 11, further comprising a
`7.
`high temperature drying of the inactivated comminuted material, the high
`temperature drying being configured to decompose binder." ....................... 44
`Ground 2: Claim 4 Is Rendered Obvious by Tomioka in View of
`B.
`45
`Yosuke
`Claim 4: "The method according to claim 1, further comprising:
`1.
`performing the drying within an interior of a drying device; continuous
`monitoring, by a controller, of at least one progress parameter that is
`indicative of a progress of the drying, the at least one progress parameter
`comprising a pressure in the interior of the drying device or a pressure of a
`gas flow out of the interior of the drying device drying process, and not
`terminating the drying process until the progress parameter reaches a pre-
`determined progress parameter threshold value." ......................................... 45
`Ground 3: Claims 5 and 9 Are Rendered Obvious by Tomioka in View
`C.
`of Hayashi 48
`Claim 5: "The method according to claim 1, wherein the [the]
`1.
`pressure is not more than 30 hPa for at least 50% of a duration of the drying,
`or the pressure does not exceed 50 hPa during the drying, or both." ............ 48
`Claim 9: "The method according to claim 3 wherein condensing is
`2.
`performed at an ambient pressure, or condensing is performed at a
`temperature within a temperature range that extends from 0° C. to 50° C., or
`both." 49
`Ground 4: Claims 6 and 7 Are Rendered Obvious by Tomioka in View
`D.
`of LithoRec 49
`Claim 6: "The method according to claim 1, further comprising:
`1.
`feeding the comminuted material, through an airlock, into an interior of a
`
`
`
`iv
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`drying device; and performing the drying within the interior of the drying
`device. ........................................................................................................... 49
`Claim 7: "The method according to claim 6, further comprising:
`2.
`vacuum sucking away of gases created from vaporized organic carbonate
`during the drying process and/or wherein the batteries comprise current
`collector foils having a coating material and movement using the agitator is
`conducted such that at least 50% by weight of the coating material of
`comminuted material is sucked away." ......................................................... 51
`Ground 5: Claims 13 and 14 Are Rendered Obvious by Tomioka in
`E.
`view of Perry ........................................................................................................... 52
`Claim 13: "The method according to claim 1, further comprising:
`1.
`moving by an agitator, over a duration of the drying, a not yet inactivated
`comminuted material among the comminuted material, or a mixture of
`inactivated comminuted material and not yet inactivated comminuted
`material, or both; and supplying, during the drying, a vaporization heat to the
`comminuted material, wherein the supplying includes the agitator supplying
`at least 35% of said vaporization heat." ........................................................ 52
`Claim 14: "The method according to claim 1, further comprising:
`2.
`performing the drying within an interior of a drying device; and agitating, by
`an agitator, the inactivated comminuted material when removing the
`inactivated comminuted material from the drying device." .......................... 55
`Ground 6: Claims 1-3, 5 and 9-12 Are Disclosed or Rendered Obvious
`F.
`by Hanisch in view of Hayashi ................................................................................ 56
`1.
`Claim 1 ................................................................................................ 56
`2.
`Claim 2: "The method according to claim 1, wherein: the organic
`solvent comprises dimethyl carbonate, or ethyl methylcarbonate, or both;
`and the drying process further continues the drying until the vaporizing
`removes at least 90 percent by weight of the dimethyl carbonate, or ethyl
`methylcarbonate, or both, from the electrolyte. ............................................ 63
`Claim 3: "The method according to claim 1, further comprising:
`3.
`capturing and condensing gases created from the vaporizing of organic
`carbonate in the electrolyte during the drying process. ................................. 64
`
`
`
`v
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`Claim 5: "The method according to claim 1, wherein the [the]
`4.
`pressure is not more than 30 hPa for at least 50% of a duration of the drying,
`or the pressure does not exceed 50 hPa during the drying, or both." ............ 64
`Claim 9: "The method according to claim 3 wherein condensing is
`5.
`performed at an ambient pressure, or condensing is performed at a
`temperature within a temperature range that extends from 0° C. to 50° C., or
`both." 64
`Claim 10: "The method according to claim 1, wherein comminuting of
`6.
`the used lithium batteries is configured such that the comminuted material
`includes components of comminuted material, and at least 90% by weight of
`the components of the comminuted material have a sieve size that is not
`more than 50 mm." ........................................................................................ 65
`Claim 11: "The method according to claim 1, wherein receiving the
`7.
`used lithium-ion batteries further includes receiving used lithium-ion
`batteries that further comprise carrier foil and binder that binds active
`material to the carrier foil, and the temperature of the vaporizing pressure-
`temperature being not more than 80° C., lower than a decomposition
`temperature of the binder, and lower than the decomposition temperature of
`the fluorine salt." ........................................................................................... 65
`Claim 12: "The method according to claim 11, further comprising a
`8.
`high temperature drying of the inactivated comminuted material, the high
`temperature drying being configured to decompose binder." ....................... 66
`Ground 7: Claim 4 Is Rendered Obvious by Hanisch in view of
`G.
`Hayashi and/or Yosuke ............................................................................................ 67
`Claim 4: "The method according to claim 1, further comprising:
`1.
`performing the drying within an interior of a drying device; continuous
`monitoring, by a controller, of at least one progress parameter that is
`indicative of a progress of the drying, the at least one progress parameter
`comprising a pressure in the interior of the drying device or a pressure of a
`gas flow out of the interior of the drying device drying process, and not
`terminating the drying process until the progress parameter reaches a pre-
`determined progress parameter threshold value." ......................................... 67
`Ground 8: Claim 6 Is Rendered Obvious by Hanisch in View of
`H.
`Hayashi and/or in further view of LithoRec ............................................................ 68
`
`
`
`vi
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`Claim 6: "The method according to claim 1, further comprising:
`1.
`feeding the comminuted material, through an airlock, into an interior of a
`drying device; and performing the drying within the interior of the drying
`device. ........................................................................................................... 68
`Ground 9: Claims 7, 13, 14 Are Rendered Obvious by Hanisch in
`I.
`view of Hayashi and in further view of LithoRec and/or Perry .............................. 68
`Claim 7: "The method according to claim 6, further comprising:
`1.
`vacuum sucking away of gases created from vaporized organic carbonate
`during the drying process and/or wherein the batteries comprise current
`collector foils having a coating material and movement using the agitator is
`conducted such that at least 50% by weight of the coating material of
`comminuted material is sucked away." ......................................................... 68
`Claim 13: "The method according to claim 1, further comprising:
`2.
`moving by an agitator, over a duration of the drying, a not yet inactivated
`comminuted material among the comminuted material, or a mixture of
`inactivated comminuted material and not yet inactivated comminuted
`material, or both; and supplying, during the drying, a vaporization heat to the
`comminuted material, wherein the supplying includes the agitator supplying
`at least 35% of said vaporization heat." ........................................................ 70
`Claim 14: "The method according to claim 1, further comprising:
`3.
`performing the drying within an interior of a drying device; and agitating, by
`an agitator, the inactivated comminuted material when removing the
`inactivated comminuted material from the drying device." .......................... 70
`Ground 10: All Challenged Claims are invalid for indefiniteness ...... 71
`All Challenged Claims – "inactivating the comminuted material and
`1.
`obtaining inactivated comminuted material as a result" ............................... 71
`Claim 7. "wherein…movement using the agitator is conducted such
`2.
`that at least 50% by weight of the coating material of comminuted material
`is sucked away." ............................................................................................ 74
`Claim 10. The method according to claim 1, wherein comminuting of
`3.
`the used lithium batteries is configured such that the comminuted material
`includes components of comminuted material, and at least 90% by weight of
`the components of the comminuted material have a sieve size that is not
`more than 50 mm .......................................................................................... 75
`
`J.
`
`
`
`vii
`
`

`

`B.
`
`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`SECONDARY CONSIDERATIONS ......................................................... 76
`X.
`Long-felt but unmet need and unexpected results .............................. 76
`A.
`Commercial success ............................................................................ 77
`B.
`XI. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`DENY INSTITUTION .......................................................................................... 80
`A.
`§325(d) ................................................................................................ 80
`Neither the art nor the arguments are the same/substantially the same
`1.
`as those considered during prosecution ......................................................... 80
`§324(a) ................................................................................................ 83
`1. Whether the Court Granted a Stay or Evidence Exists That One May
`be Granted If a Proceeding Is Instituted ........................................................ 83
`Proximity of the Court's Trial Date to the Board's Projected Statutory
`2.
`Deadline for a Final Written Decision .......................................................... 84
`3.
`Investment in the Parallel Proceeding by the Court and the Parties ... 84
`4.
`Overlap between Issues Raised in the Petition and in the Parallel
`Proceeding ..................................................................................................... 84
`5. Whether the Petitioner and the Defendant in the Parallel Proceeding
`Are the Same Party ........................................................................................ 85
`Other Circumstances That Impact the Board's Exercise of Discretion,
`6.
`Including the Merits ...................................................................................... 85
`CONCLUSION ........................................................................................ 85
`
`XII.
`
`
`
`
`
`
`
`
`
`
`
`
`viii
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`
`LISTING OF EXHIBITS
`
`
`Description
`U.S. Patent No. 12,119,463 ("'463 Patent")
`Patent Prosecution History for U.S. Patent No. 12,119,463
`Declaration of Marc Juzkow
`Japanese Patent App. Pub. JPH10255861 ("Tomioka")
`Translation of Tomioka
`Certification for translation of Tomioka
`Japanese Patent App. Pub. JP2016080284A ("Yosuke")
`Translation of Yosuke
`Certification for translation of Yosuke
`U.S. Patent No. 9,843,077 ("Hayashi")
`Kwade et al., LithoRec: Recycling lithium-ion batteries,
`published in 2012 by Cuvillier Verlag Göttingen ("LithoRec")
`Translation of LithoRec
`Certification of translation of LithoRec
`U.S. Patent Appl. Pub. No. US 2008/0050295 A1 ("Uchida")
`Perry et al., Perry's Chemical Engineers' Handbook (7th Ed.)
`published in 1997 by McGraw-Hill ("Perry")
`U.S. Patent No. 11,050,097 ("'097 Patent")
`RESERVED
`Ascend Elements Inc. v. Duesenfeld GmbH, IPR2024-00948,
`Paper 10 (Decision Granting Institution of Inter Partes
`Review for U.S. 11,050,097) ("'097 Institution Decision")
`Ascend Elements Inc. v. Duesenfeld GmbH, IPR2024-00948,
`Paper 19 (Patent Owner Response [REDACTED]) ("'097
`POR")
`Declaration of Sylvia Hall-Ellis, Ph.D.
`U.S. Patent App. Pub. No. US 2014/0290438 A1 ("Hanisch")
`Duesenfeld GmbH v. Ascend Elements Inc., 1:23-cv-01194-
`JFM, Stay Order, ECF No. 169 (D. Del. Jan. 17, 2025)
`Han et al., Lithium-ion hopping weakens thermal stability
`of LiPF6 carbonate electrolytes, Cell Reports Physical
`Science 5, 101768 (Jan. 17, 2024).
`Nitta et al., Li-ion battery materials: present and future, 18
`Materials Today 252 (June 2015)
`Solef® PVDF Typical Properties, Solvay Brochure
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`
`1012
`1013
`1014
`1015
`
`1016
`1017
`1018
`
`1019
`
`1020
`1021
`1022
`
`1023
`
`1024
`
`1025
`
`
`
`ix
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`
`Exhibit
`1026
`
`1027
`
`1028
`1029
`
`Description
`Lu et al., Thermal behavior and decomposition kinetics of six
`electrolyte salts by thermal analysis, 156 J. Power Sources
`555 (2006)
`Yang et al., Thermal stability of LiPF6 salt and Li-ion battery
`electrolytes containing LiPF6, 161 J. Power Sources 573
`(2006)
`U.S. Patent No. 5,691,077
`URT Umwelt und Recyclingtechnik GmbH v. Duesenfeld
`GmbH, IPR2024-00887, Paper 18 (Patent Owner Response
`[REDACTED])
`
`
`
`
`
`x
`
`

`

`I.
`
`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`
`INTRODUCTION
`Petitioner requests post grant review and cancellation of claims 1-14 (the
`
`"Challenged Claims") of U.S. Patent No. 12,119,463 (the "'463 Patent," EX1001) in
`
`accordance with §§321-329 and §42.200 et seq.1
`
`The '463 Patent discloses an alleged invention for recycling used batteries.
`
`But as discussed in detail below, the claims challenged in this petition merely recite
`
`previously known practices in the art, such as shredding used batteries and drying
`
`out shredded battery material under low temperatures and reduced air pressure to
`
`remove electrolyte. (See, e.g., EX1001, Claim 1.)
`
`While the '463 Patent specification purports to have invented the idea of low-
`
`temperature, low-pressure drying, such drying was already well known in the art as
`
`a beneficial method of recycling lithium-ion batteries, as drying the electrolyte at
`
`low temperatures and low pressures reduces the likelihood of the formation of
`
`hydrofluoric acid, a toxic gas. (See, e.g., EX1001, 4:11-25; EX1003, ¶67.) For
`
`example, EX1005, a Japanese patent application publication to inventor Tomioka
`
`("Tomioka"), discloses evaporating battery electrolyte under low temperatures and
`
`pressurized conditions, and the disclosures in Tomioka render obvious '463 Patent
`
`
`1 Section cites are to 35 U.S.C. or 37 C.F.R. as context indicates, and unless
`
`otherwise noted, all emphasis and annotations are added and quotations omitted.
`
`
`
`1
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`claims 1-3, 8, and 10-12. Likewise, Tomioka in view of Yosuke, Hayashi, LithoRec,
`
`and/or Perry render obvious all the limitations of all remaining dependent claims.
`
`As discussed herein, a POSITA would have been motivated to apply the teachings
`
`of those references to Tomioka.
`
`Similarly, more than two years before the claimed priority date of the '463
`
`Patent, Christian Hanisch, the named inventor of the '463 Patent, and his colleagues
`
`had already disclosed the same method of recycling used batteries, including the
`
`comminution of lithium batteries and the drying under vacuum with low
`
`temperatures to evaporate the electrolyte. (EX1021, "Hanisch".) Hansich's earlier
`
`disclosures in view of the teachings of Hayashi, Yosuke, LithoRec, and Perry render
`
`obvious all the limitations of all the Challenged Claims. As discussed herein, a
`
`POSITA would have been motivated to apply the teachings of those references to
`
`Hanisch.
`
`The prior art cited herein, alone or in combination, in view of the knowledge
`
`of a POSITA before the effective filing date of the '463 Patent, renders the claims
`
`challenged here unpatentable.
`
`II. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`A. Real Party-In-Interest
`Petitioner Ascend Elements, Inc. is the real party-in-interest.
`
`
`
`2
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`
`B. Related Matters
`The '463 Patent has been asserted by Duesenfeld in the district court
`
`proceeding Duesenfeld GMBH v. Ascend Elements, Inc., Case No. 1:23-cv-01194-
`
`JFM (D. Del. Oct. 20, 2023).
`
`C. Lead and Back-up Counsel, and Service Information
`Petitioner designates the following counsel:
`
`Lead Counsel
`Andrew D. Gish (Reg. # 67,562)
`GISH PLLC
`41 Madison Avenue
`New York, New York 10010
`Telephone: (212) 518-7380
`andrew@gishpllc.com
`
`Back-Up Counsel
`Ryan Iwahashi (Reg # 63,378)
`GISH PLLC
`50 California Street, Suite 1500
`San Francisco, CA 94111
`Telephone: (415) 630-8960
`ryan@gishpllc.com
`
`Conor B. McDonough
`(pro hac vice motion forthcoming)
`GISH PLLC
`41 Madison Avenue
`New York, New York 10010
`Telephone: (212) 518-2620
`conor.mcdonough@gishpllc.com
`
`Josef B. Schenker
`(pro hac vice motion forthcoming)
`GISH PLLC
`41 Madison Avenue
`New York, New York 10010
`Telephone: (212) 518-2870
`josef.schenker@gishpllc.com
`
`Darlena H. Subashi
`(pro hac vice motion forthcoming)
`GISH PLLC
`41 Madison Avenue
`
`
`
`3
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`New York, New York 10010
`Telephone: (212) 518-2882
`darlena.subashij@gishpllc.com
`
`Petitioner consents to email service at the email addresses above.
`
`III. PAYMENT OF FEES
`The required fee is being paid electronically through P-TACTS.
`
`IV. REQUIREMENTS FOR POST-GRANT REVIEW
`A. Grounds for Standing
`Pursuant to §42.204(a), Petitioner certifies that the '463 Patent is available for
`
`PGR and that Petitioner is not barred or estopped from requesting PGR of the
`
`Challenged Claims of the '463 Patent on the grounds identified herein. The '463
`
`Patent issued on 10/15/2024, and this Petition is being filed within nine months of
`
`that issue date (03/7/2025).
`
`B.
`Identification of Challenge
`Pursuant to §42.204, Petitioner requests PGR of the Challenged Claims and
`
`that the Board cancel the same as unpatentable. The '463 Patent issued from Patent
`
`Application No. 16/343,224, filed Apr. 18, 2019, as a national stage entry of PCT
`
`
`
`4
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`Application No. PCT/EP2017/076113, filed Oct. 12, 2017. The '463 Patent claims
`
`priority to a German Patent Application No. 10 2016 120 046.8, filed Oct. 20, 2016.2
`
`1.
`The Specific Art on Which the Challenge is Based
`Petitioner relies upon the following prior art:
`
`Exhibit
`1004
`
`1021
`
`1011
`
`1007
`1010
`
`1015
`
`Reference
`Japanese Patent App. Pub. JPH10255861
`("Tomioka")
`U.S. Patent App. Pub. No. US 2014 /
`0290438 A1 ("Hanisch")
`Kwade et al., LithoRec: Recycling lithium-
`ion batteries, published in 2012 by Cuvillier
`Verlag Göttingen ("LithoRec")
`Japanese Patent App. Pub. JP2016080284A
`("Yosuke")
`U.S. Patent No. 9,843,077 ("Hayashi")
`Perry et al., Perry's Chemical Engineers'
`Handbook (7th ed.) published in 1997 by
`McGraw-Hill ("Perry")
`
`Prior Art Status
`Post-AIA 102(a)(1)
`
`Post-AIA 102(a)(1)
`
`Post-AIA 102(a)(1)
`
`Post-AIA 102(a)(1)
`Post-AIA 102(a)(2)
`
`Post-AIA 102(a)(1)
`
`
`
`
`2 Petitioner takes no position as to the propriety of the priority claims since the art
`
`presented herein predates the earliest filing. Petitioner reserves the right to challenge
`
`these priority claims.
`
`
`
`5
`
`

`

`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`2.
`Statutory Grounds on Which the Challenge is Based
`Petitioner respectfully requests cancellation of the Challenged Claims on the
`
`following grounds:
`
`Ground Claims
`
`1
`2
`3
`4
`
`5
`6
`7
`
`8
`
`1-3, 8, 10-12
`4
`5, 9
`6, 7
`
`13-14
`1-3, 5, 9-12
`4
`
`6
`
`9
`10
`
`7, 13, 14
`1-14
`
`Statutory
`Basis
`§103
`§103
`§103
`§103
`
`§103
`
`§103
`§103
`
`§103
`
`§103
`
`§112(b)
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`Prior Art
`
`Tomioka
`Tomioka in view of Yosuke
`Tomioka in view of Hayashi
`Tomioka alone or in view of
`LithoRec
`Tomioka and LithoRec in view of
`Perry
`Hanisch in view of Hayashi
`Hanisch in view of Hayashi and
`Yosuke
`Hanisch in view of Hayashi and
`LithoRec
`Hanisch in view of Hayashi,
`LithoRec and/or Perry
`(n/a)
`
`The information required by §§42.204(b)(4)-(5) is provided in Section IX.
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`This Petition is supported by the Declaration of Mr. Juzkow. (EX1003.)
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`V. BACKGROUND
`A.
`Summary of the '463 Patent
`The '463 Patent specification acknowledges that heated drying, deactivation
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`of battery components, and comminution of battery material were all previously
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`known in the art. (EX1001, 1:19-57.) The '463 Patent further admits prior art patent
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`applications already disclosed a battery recycling process comprising comminuting
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`6
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`

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`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`batteries followed by drying, and that such a process is "well-suited to the efficient
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`recycling of larger amounts of galvanic elements." (EX1001, 1:36-45.) The '463
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`Patent does not, however, suggest that those earlier disclosed processes are
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`themselves disadvantageous; rather, the alleged problem was that "for partial load
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`operation, the construction of this installation is comparatively complex." (EX1001,
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`1:36-45.) And the claims of the '463 Patent do not recite limitations directed to a
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`"partial load operation." (EX1003, ¶¶67-68.)
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`The purportedly novel solution of the '463 Patent is to inactivate comminuted
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`material at least by drying it at relatively low temperatures and pressures. (EX1001,
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`Cl.1.) In the drying step, the comminuted material is dried to evaporate organic
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`carbonate solvents in the electrolyte, such as dimethyl carbonate ("DMC") and/or
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`ethyl methylcarbonate ("EMC"). (EX1001, 4:11-25.) The comminuted material
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`may also be dried at higher temperatures such that the binder that binds the
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`electrochemically active material in the lithium battery largely decomposes.
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`(EX1001, 9:37-43; EX1003, ¶69.)
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`The Challenged Claims are generally directed to a method for recycling
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`batteries by comminuting the batteries and inactivating the comminuted material
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`using a drying process under reduced pressure and reduced temperature. (EX1003,
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`¶70.)
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`7
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`

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`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`The single independent claim 1 is representative of the challenged method
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`claims:
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`1. A method for treating used lithium batteries, comprising:
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`receiving, into a comminuting device, used lithium batteries that include a
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`cathode, anode, separator, and electrolyte comprising a fluorine salt and a solvent,
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`the solvent including an organic carbonate;
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`comminuting the used lithium batteries, by the comminuting device, and
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`obtaining comminuted material as a result; and
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`inactivating the comminuted material and obtaining inactivated comminuted
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`material as a result, wherein the inactivating includes a drying process, comprising
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`drying the comminuted material by removal of organic carbonate from the
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`electrolyte by vaporizing the organic carbonate at a pressure-temperature above a
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`boiling point of the organic carbonate, the pressure being not more than 300 hPa,
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`and the temperature being not more than 80° C. and lower than a decomposition
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`temperature of the fluorine salt. (EX1001, Cl. 1; EX1003, ¶71.)
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`The challenged dependent claims add limitations such as specifying the
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`particular substances and amount of those substances to be evaporated; specifying
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`additional pressure limitations; and providing details on additional structural
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`features of the dryer, such as a condenser, an airlock, and an agitator, for example.
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`(EX1003, ¶72.)
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`8
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`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`
`B.
`Prosecution History of the '463 Patent
`Application 16/343,224, which issued as the '463 Patent, contained 20 claims
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`following preliminary amendments. (EX1002, 490-494.)
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`Examiner issued a non-final rejection on 5/25/2021, rejecting claims 1-8 and
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`17-18 on the ground of nonstatutory double patenting as being unpatentable over the
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`claims of U.S. Patent No. 11,050,097, stating that "[a]lthough the claims at issue are
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`not identical, they are not patentably distinct from each other because the
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`temperature requirement of the instant claim 1 is not recited in the claims of [the
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`‘097 Patent]." (EX1002, 288.) The Examiner went on to state that "[d]iscovery of
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`a workable temperature for operation of the prior filed patent would be obvious and
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`routine and therefore not materially distinct." (Id.) In response, Applicant filed a
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`terminal disclaimer to the ‘097 Patent. (EX1002, 257.)
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`In response to an 11/23/2021 indefiniteness challenge, Applicant amended
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`claim 6—deleting recitation of "an agitator"—but failed to amend claim 7, which
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`depends from claim 6 and relies on claim 6's agitator to provide an antecedent basis.
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`(EX1002, 203.)
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`In response to a 11/23/2021 final rejection based on US 2018/0013181A1
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`("Ho") in combination with US 2016/0049699A1 (the application that issued as
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`Hayashi), Applicant amended claim 1 to require that inactivation occur at a
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`"temperature-pressure above a boiling point of the organic carbonate…and lower
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`9
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`Petition for Post Grant Review of U.S. Patent No. 12,119,463
`Filed: March 7, 2025
`than a decomposition temperature of the fluorine salt" (EX1002, 202), arguing that
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`Hayashi disclosed the "opposite, namely the removal of the organic carbonate and
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`the fluorine salt, together, followed by separation of the two." (EX1002, 209.)
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`Applicant further asserted that Hayashi involved "a pressure-temperature that causes
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`temperature decomposition of the organic solvent and the fluoride salt in the
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`electrolyte." (EX1002, 210.) Applicant, however, did not articulate why Hayashi's
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`disclosure of removing the organic carbonate and the fluorine salt "together" would
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`mean that it did not disclose using temperature "lower than a decomposition
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`