Case: 23-1194 Document: 39 Page: 1 Filed: 03/06/2024
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`MAXELL, LTD.,
`Plaintiff-Appellant
`
`v.
`
`AMPEREX TECHNOLOGY LIMITED,
`Defendant-Appellee
`______________________
`
`2023-1194
`______________________
`
`Appeal from the United States District Court for the
`Western District of Texas in Nos. 6:21-cv-00347-ADA, 6:21-
`cv-01007-ADA, Judge Alan D. Albright.
`______________________
`
`Decided: March 6, 2024
`______________________
`
`HILARY L. PRESTON, Vinson & Elkins LLP, Austin, TX,
`argued for plaintiff-appellant. Also represented by CORBIN
`CESSNA, JEFFREY TA-HWA HAN, ERIK SHALLMAN; ERIC
`JOSEPH KLEIN, PAIGE HOLLAND WRIGHT, Dallas, TX.
`
` DAVID SPENCER BLOCH, Greenberg Traurig LLP, San
`Francisco, CA, argued for defendant-appellee. Also repre-
`sented by HAROLD H. DAVIS, JR.; YANG LIU, East Palo Alto,
`CA.
` ______________________
`
`

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`MAXELL, LTD. v. AMPEREX TECHNOLOGY LIMITED
`
`Before PROST, TARANTO, and CHEN, Circuit Judges.
`TARANTO, Circuit Judge.
`Maxell, Ltd. owns U.S. Patent No. 9,077,035, which de-
`scribes and claims a rechargeable lithium-ion battery. Am-
`perex Technology Limited is a manufacturer of lithium-ion
`batteries. In two now-consolidated actions, Maxell as-
`serted infringement, and Amperex challenged the validity,
`of claims of the ’035 patent. The ’035 patent’s claims re-
`quire at least two lithium-containing transition metal ox-
`ides, represented by formulas that include a transition
`metal element M1, and, as relevant here, two limitations of
`the claims state requirements for that element. The dis-
`trict court held the claim language defining M1 to be indef-
`inite on the ground that the two limitations contradicted
`each other, Maxell, Ltd. v. Amperex Technology Ltd.,
`No. 21-cv-00347, 2022 WL 16858824, at *19–21 (W.D. Tex.
`Nov. 10, 2022) (Claim Construction Order), and on that ba-
`sis the court entered partial final judgment in favor of Am-
`perex, J.A. 18–20. We reverse, concluding that there is no
`contradiction and therefore no indefiniteness. The case is
`remanded for further proceedings.
`I
`A
`The ’035 patent, titled “Nonaqueous Secondary Battery
`and Method of Using the Same,” describes and claims a
`lithium-ion battery with a positive electrode, a negative
`electrode, and a nonaqueous electrolyte. ’035 patent, Ab-
`stract. The limitations of the patent’s claims primarily con-
`cern the positive electrode and the electrolyte. See id., col.
`29, line 20, through col. 30, line 58. All claims of the patent
`include a positive electrode that includes at least two lith-
`ium-containing transition metal oxides with different aver-
`age particle sizes. Id., col. 4, lines 6–9; id., col. 29, lines 21–
`26. The transition metal oxides are represented in the
`claims by formulas that include, in relevant part, a transi-
`tion metal element M1. Id., col. 29, lines 28–31, 43–49.
`
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`Case: 23-1194 Document: 39 Page: 3 Filed: 03/06/2024
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`MAXELL, LTD. v. AMPEREX TECHNOLOGY LIMITED
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`Claim 1, the sole independent claim of the ’035 patent,
`reads as follows (letters added to label the limitations):
`1. A nonaqueous secondary battery comprising:
`[a] a positive electrode having a positive elec-
`trode mixture layer, a negative electrode, and
`a nonaqueous electrolyte,
`[b] wherein the positive electrode comprises, as
`active materials, at least two lithium-contain-
`ing transition metal oxides having different av-
`erage particle sizes, and the lithium-containing
`transition metal oxide having the smallest av-
`erage particle size is a lithium-containing tran-
`sition metal oxide represented by the formula
`(1): LixM1yM2zM3vO2
`[c] wherein M1 represents at least one tran-
`sition metal element selected from Co, Ni
`and Mn, M2 represents Mg and at least one
`metal element selected from the group consist-
`ing of Ti, Zr, Ge, Nb, Al and Sn, M3 represents
`at least one element selected from the group
`consisting of Na, K, Rb, Be, Ca, Sr, Ba, Sc, Y,
`La, Hf, V, Ta, Cr, Mo, W, Tc, Re, Fe, Ru, Rh,
`Cu, Ag, Au, B, Ca, In, Si, P and Bi, and x, y, z
`and v are numbers satisfying the equations re-
`spectively:
`0.97≤x<1.02,
`0.8≤y<1.02,
`0.002≤z≤0.05, and 0≤v≤0.05, and has an aver-
`age particle size from 2 μm to 10 μm, and the
`lithium-containing transition metal oxide hav-
`ing the largest average particle size is a lith-
`ium-containing
`transition metal
`oxide
`represented
`by
`the
`formula
`(2):
`LiaM1bM2cM3dO2
`[d] wherein M1, M2 and M3 are the same as de-
`fined in the formula (1), and a, b, c and d are
`numbers satisfying the equations respectively:
`0.97≤a<1.02, 0.8≤b<1.02, 0.0002≤c≤0.02, and
`
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`MAXELL, LTD. v. AMPEREX TECHNOLOGY LIMITED
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`0≤d≤0.02, and has an average particle size from
`5 μm to 25 μm,
`[e] wherein said electrolyte contains a fluorine-
`containing organic solvent,
`[f] wherein the content of Co in the transi-
`tion metal M1 of the formulae (1) and (2) is
`from 30% by mole to 100% by mole,
`[g] wherein the content of said lithium-contain-
`ing transition metal oxide having the smallest
`average particle size in the lithium-containing
`transition metal oxides is from 5% by weight to
`60% by weight,
`[h] wherein the content of said lithium-contain-
`ing transition metal oxide having the largest
`average particle size in the lithium-containing
`transition metal oxides is from 40% by weight
`to 95% by weight, and
`[i] wherein an amount of said fluorine-contain-
`ing organic solvent is 0.1% by weight to 30% by
`weight based on the whole weight of the elec-
`trolyte.
`Id., col. 29, line 20, through col. 30, line 9 (emphases
`added).
`
`B
`In April 2021, Amperex filed a complaint in district
`court in New Jersey seeking a declaratory judgment of non-
`infringement of several Maxell patents, including the ’035
`patent. Complaint, Amperex Technology Ltd. v. Maxell
`Ltd., No. 21-cv-08461 (D.N.J. Apr. 6, 2021), ECF No. 1; J.A.
`1341–430. In response, Maxell brought an affirmative pa-
`tent-infringement action against Amperex in the Western
`District of Texas on the same set of patents. Complaint,
`Maxell Ltd. v. Amperex Technology Ltd., No. 21-cv-00347
`(W.D. Tex. Apr. 8, 2021), ECF No. 1; J.A. 1431–565. In
`January 2022, the cases were consolidated in the Western
`
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`District of Texas. J.A. 1996–97; see also In re Amperex
`Technology Ltd., No. 2022-105, 2022 WL 135431 (Fed. Cir.
`Jan. 14, 2022) (denying Amperex’s mandamus petition
`challenging the transfer of its New Jersey action).
`In February 2022, the district court conducted claim-
`construction proceedings and issued an order that, among
`other things, addressed the two above-highlighted wherein
`clauses and held to be indefinite the following phrase that
`combines them: “M1 represents at least one transition
`metal element selected from Co, Ni and Mn, . . . wherein
`the content of Co in the transition metal M1 of the formulae
`(1) and (2) is from 30% by mole to 100% by mole.” J.A. 25.
`On November 10, 2022, the district court issued a claim
`construction order setting forth its reasoning. Claim Con-
`struction Order, at *19–21. The court reasoned that “the
`plain language of the claim recites a contradiction,” be-
`cause the first limitation does not require the presence of
`cobalt (nickel or manganese suffices), so cobalt is “op-
`tional,” whereas the second limitation does require cobalt.
`Id. at *20; see also id. at *21 (repeating point that the first
`limitation describes “options”).
`Pursuant to Federal Rule of Civil Procedure 54(b), the
`district court severed the ’035 patent claims and counter-
`claims from the remainder of the case and entered partial
`final judgment in favor of Amperex and against Maxell
`with respect to all claims and counterclaims involving the
`’035 patent. J.A. 18–20. Maxell filed a timely notice of ap-
`peal on November 14, 2022, J.A. 99, within the 30 days al-
`lowed under 28 U.S.C. § 2107(a). We have jurisdiction to
`review the partial final judgment under 28 U.S.C.
`§ 1295(a)(1).
`
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`MAXELL, LTD. v. AMPEREX TECHNOLOGY LIMITED
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`II
`Under 35 U.S.C. § 112, ¶ 2 (2006),1 a patent specifica-
`tion “shall conclude with one or more claims particularly
`pointing out and distinctly claiming the subject matter
`which the applicant regards as his invention.” Patent
`claims that fail to meet the “particularly pointing out and
`distinctly claiming” requirement are invalid for indefinite-
`ness. When “claims, read in light of the specification delin-
`eating the patent, and the prosecution history, fail to
`inform, with reasonable certainty, those skilled in the art
`about the scope of the invention,” they are indefinite. Nau-
`tilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
`(2014). “Indefiniteness must be proven by clear and con-
`vincing evidence.” Sonix Technology Co. v. Publications In-
`ternational, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017). We
`decide indefiniteness de novo where, as here, there are no
`material underlying factual issues. See Cox Communica-
`tions, Inc. v. Sprint Communication Co., 838 F.3d 1224,
`1228 (Fed. Cir. 2016); Biosig Instruments, Inc. v. Nautilus,
`Inc., 783 F.3d 1374, 1377–78 (Fed. Cir. 2015).
`The district court based its indefiniteness conclusion on
`its determination that “the plain language of [claim 1] re-
`cites a contradiction” in that “[t]he first part of the claim
`recites a Markush group where [cobalt] is not necessarily
`required to be in the claimed compound while the second
`part of the claim recites that [cobalt] is necessarily re-
`quired. For an element to simultaneously be optional and
`required is a contradiction on its face.” Claim Construction
`Order, at *20. That rationale, we conclude, is incorrect, but
`not because a contradiction in a claim cannot produce
`
`
`1 Section 112 was amended by the Leahy-Smith
`America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat.
`284, 296–97 (2011), but the pre-AIA version applies to this
`case. The AIA relabeled § 112 ¶ 2 as § 112(b) but made no
`change in the language material to this case.
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`indefiniteness. Rather, there is no contradiction in the
`claim language at issue in this case.
`The first of the two limitations at issue regarding M1–
`limitation [c]—states one requirement a transition metal
`element must meet to come within the claim: It must con-
`tain cobalt, nickel, or manganese. The second limitation at
`issue—limitation [f]—states a second requirement: The
`transition metal element must contain cobalt at a content
`of 30% to 100% by mole. It is perfectly possible for a tran-
`sition metal element to meet both requirements. The two
`limitations are therefore not contradictory.
`It makes no difference, at least here, that the two re-
`quirements are placed in separate limitations—rather
`than both appearing in limitation [c]. Such placement does
`not alter the logical point that it is possible to meet both
`requirements, meaning that there is no contradiction.
`Moreover, a reader seeking to understand “the scope of the
`invention,” Nautilus, 572 U.S. at 901, is charged with
`knowing not only that any particular claim language must
`be “read in the context of the full claim,” Salazar v. AT&T
`Mobility LLC, 64 F.4th 1311, 1318 (Fed. Cir. 2023) (empha-
`sis added), but also that “all limitations of a claim must be
`considered in deciding what invention is defined,” Hall v.
`Taylor, 332 F.2d 844, 848 (CCPA 1964) (per Rich, J.); see
`also Warner-Jenkinson Co. v. Hilton Davis Chemical Co.,
`520 U.S. 17, 29 (1997) (“Each element contained in a patent
`claim is deemed material to defining the scope of the pa-
`tented invention.”). In this context, as in other legal-inter-
`pretation settings, later text must be read along with
`earlier text to discern the meaning. Cf. Arkansas Game
`and Fish Commission v. United States, 568 U.S. 23, 36
`(2014) (“But the first rule of case law as well as statutory
`interpretation is: Read on.”).
`The placement of the two requirements does not create
`an otherwise-nonexistent contradiction. That is so even if
`there was a more artful way of stating the two require-
`ments within the same claim. And the record provides a
`readily discernible explanation for the placement: The
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`MAXELL, LTD. v. AMPEREX TECHNOLOGY LIMITED
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`second requirement for the M1 term was added during
`prosecution to overcome a prior art reference that primar-
`ily used nickel as a transition metal. See J.A. 1272–80,
`1293–99. That there were other ways of drafting the claim
`does not render the claim language contradictory or indef-
`inite.
`The district court’s explanation for its contrary conclu-
`sion repeatedly describes limitation [c] as granting “op-
`tions” as to the makeup of M1—seemingly in the sense of a
`grant of right to others—which limitation [f] then takes
`back. See Claim Construction Order, at *19–21. But this
`description is inapt, even aside from its treatment of the
`limitations in isolation from each other. Claim limitations
`do not grant options. They state requirements—conditions
`that must be met for a product or process (as the case may
`be) to come within the claim’s protected zone of exclusivity.
`If there are two requirements, and it is possible to meet
`both, there is no contradiction.
`That there is no contradiction here is confirmed by the
`fact that it is the ordinary role of dependent claims to add
`narrowing limitations to the independent claims to which
`they refer. See, e.g., Alcon Research, Ltd. v. Apotex Inc.,
`687 F.3d 1362, 1367 (Fed. Cir. 2012) (noting that “a de-
`pendent claim narrows the claim from which it depends”).
`If a limitation that merely narrows an earlier limitation
`creates an invalidating contradiction, the ordinary practice
`for dependent claims would be upended because, by stat-
`ute, “[a] claim in dependent form shall be construed to in-
`corporate by reference all the limitations of the claim to
`which it refers.” 35 U.S.C. § 112 ¶ 4 (2006); 35 U.S.C.
`§ 112(d). We recognized that narrowing does not imply
`contradiction when we observed that “[a] dependent claim
`that contradicts, rather than narrows, the claim from
`which it depends is invalid.” Multilayer Stretch Cling Film
`Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362
`(Fed. Cir. 2016) (emphasis added). Amperex itself properly
`concedes that there would be no contradiction, and there-
`fore no indefiniteness problem, if limitation [f] were recited
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`in a dependent claim, rather than in independent claim 1
`itself. Oral Arg. at 15:45–17:04. But there is no difference
`material to the indefiniteness inquiry between a narrowing
`limitation recited in a dependent claim and the situation
`here, where the further narrowing limitation is recited in
`the independent claim itself.
`Amperex, in support of its position, notes the contrast
`between the claim language defining M1 and the claim lan-
`guage defining the M2 term, which clearly requires magne-
`sium. ’035 patent, col. 29, lines 33–35 (“M2 represents Mg
`and at least one metal element selected from the group con-
`sisting of Ti, Zr, Ge, Nb, Al, and Sn.”). The suggestion
`seems to be that a relevant artisan would be irremediably
`uncertain about the scope of M1 because if the patentee
`truly meant to cover a cobalt-requiring M1, it would have
`written the claim by using the language defining M2. But
`this suggestion in no way establishes a contradiction,
`which was the district court’s sole basis for holding the
`claim indefinite. And it lacks merit on its own terms. The
`language defining M1 is clear, and it is not overridden by
`the specification or prosecution history. A relevant reader
`would not reasonably be confused into abandoning that
`clear meaning by the claim’s use of different language for
`defining M2. That is especially so because the composi-
`tional mixes of the two elements are different: M1 can be
`100% cobalt, whereas M2 requires both magnesium and an-
`other metal element (from the six-member group). One
`would not expect simple borrowing of the M2 claim-lan-
`guage formulation for M1.
`
`III
`The district court’s indefiniteness ruling and partial fi-
`nal judgment are reversed and the matter is remanded for
`further proceedings consistent with this opinion.
`Costs awarded to appellant.
`REVERSED AND REMANDED
`
`