Maxell Ltd. v. Amperex Tech. Ltd.

Docket No. 2023-1194

LOURIE, CHEN, CUNNINGHAM

March 6, 2024

Brief Summary:  DC indefiniteness decision reversed and remanded as “there is no contradiction in the claim language” (limitations to Markush group of transition elements and 30-100% per mole).

Summary:   U.S. Patent No. 9,077,035, owned by Maxell, describes a rechargeable lithium-ion battery and the claims are directed to a lithium-ion battery with a specific composition of lithium-containing transition metal oxides.  The DC found the claim language defining transition metal element M1 to be indefinite, leading to a partial final judgment in favor of Amperex.  The FC panel reversed the district court’s decision, concluding that there is no contradiction in the claim language and thus no indefiniteness.  Claim 1 of the ‘035 patent includes the clauses “wherein M1 represents at least one transition metal element selected from Co, Ni and Mn” and “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”.  The DC held that the claim language was contradictory because it allowed for cobalt, nickel, or manganese, but also required cobalt at 30% to 100% by mole.  The FC panel disagreed “not because a contradiction in a claim cannot produce indefiniteness” but because “there is no contradiction in the claim language at issue in this case” (Nautilus, US 2014; Salazer, FC 2023 (“a reader seeking to understand ‘the scope of the invention’…is charged with knowing not only that any particular claim language must be ‘read in the context of the full claim’”); Arkansas Game, US 2014 (“later text must be read along with earlier text to discern the meaning”); Multilayer Stretch, FC 2016 (“[a] dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid”); also consider the prosecution history (Alcon, FC 2012 (“it is the ordinary role of dependent claims to add narrowing limitations to the independent claims to which they refer”).  In summary, the FC Circuit emphasized that patent claims should be read in their entirety and in the context of the specification and prosecution history; the placement of the requirements in separate limitations does not create a contradiction; and, dependent claims often add narrowing limitations without creating contradictions.  The DC decision was therefore reversed and remanded.

Patrick Halloran

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel…

Pat has a Ph.D. in Microbiology and Immunology from The University of Health Sciences / The Chicago Medical School (now the Rosalind Franklin Institute (North Chicago, IL) (1994)). He also completed post-doctoral studies at The National Cancer Institute (1994-1996) where he developed novel approaches for gene therapy of melanoma. Pat has been an attorney (IL) since 1999 after graduating from Chicago-Kent College of Law, which was recently ranked as one of the top five law schools for Intellectual Property in the U.S. (U.S. News and World Report link). Pat also has a B.A. in Biology from Augustana College (Rock Island, IL; 1989) where he was on two NCAA Division III National Championship football teams (1985, 1986). He currently resides in Center Valley, PA.