«IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE BASF CORPORATION and UCHICAGO ARGONNE, LLC, Plaintiffs, v. C.A. No. _ UMICORE N.V., ...»
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IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
BASF CORPORATION and UCHICAGO
v. C.A. No. _____________
UMICORE N.V., UMICORE USA INC., MAKITA
CORPORATION, MAKITA U.S.A. INC.,
MAKITA CORPORATION OF AMERICA,Defendants.
COMPLAINTPlaintiffs BASF Corporation (“BASF”) and UChicago Argonne, LLC (“Argonne”), for their Complaint against Defendants Umicore N.V. and Umicore USA Inc. (collectively, “Umicore”) and Defendants Makita Corporation, Makita U.S.A. Inc., and Makita Corporation of
America (collectively, “Makita”), hereby demand a jury trial and allege as follows:
NATURE OF THE ACTION
1. This case is in part about Umicore’s and Makita’s infringement of BASF’s and Argonne’s patents related to the chemical compositions of cathode active materials used in lithium-ion batteries. Patent infringement, however, is just one piece of the unlawful conduct Umicore has used to maintain its position as a primary supplier of such cathode active materials in this industry at the expense of BASF. Thus, this case is about Umicore’s willful and knowing infringement of patents as well as the anticompetitive, tortious, and deceptive conduct Umicore has used for its benefit and BASF’s detriment.
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2. Argonne manages Argonne National Laboratory (“ANL”) for the U.S.
Department of Energy’s Office of Science. Argonne and ANL have developed and patented significant improvements in the field of lithium-ion batteries, including developments relating to the cathode active materials used to improve the characteristics of lithium-ion batteries, including better chemical stability and reduced capacity fade. Two of those patents are United States Patent No. 6,677,082 (“the ’082 Patent”), entitled “Lithium Metal Oxide Electrodes for Lithium Cells and Batteries,” and United States Patent No. 6,680,143 (“the ’143 Patent”), entitled “Lithium Metal Oxide Electrodes for Lithium Cells and Batteries” (collectively referred to herein as the “BASF/Argonne patents”). Argonne is the assignee of those patents, and BASF has an exclusive license to those patents, subject to preexisting license grants (the “Exclusive License”).
3. BASF is the world’s leading chemical company, well-known and well-regarded for manufacturing products across a wide variety of industries ranging from plastics to crop protection to oil and gas. In the last several years, BASF hasacquired and developed production facilities for manufacturing cathode active materials for lithium-ion batteries. Argonne has now partnered with BASF to commercialize the technology in the ’082 and ’143 patents, granting BASF an Exclusive License under the BASF/Argonne patents in order to further develop and commercialize the cathode active materials technology. BASF has been producing materials disclosed and claimed in the ’082 and ’143 patents for use in lithium-ion batteries and is able to supply those materials commercially on a large scale.
4. Despite Argonne’s important developments in lithium-ion battery technology and BASF’s investments in commercializing that technology, Umicore, a rival producer of cathode active materials for lithium-ion batteries, has willfully sought to prevent BASF from entering the Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 3 of 20 PageID #: 3 market while at the same time selling its own materials that are used to infringe the ’082 and ’143 patents. Umicore has conducted its marketing and sales activities knowing that lithium-ion batteries and cathodes incorporating its materials infringe the BASF/Argonne patents. One of the companies importing into and selling products in the United States that incorporate Umicore’s cathode active materials is Makita.
5. Plaintiff BASF Corporation is a Delaware corporation with a principal place of business at 100 Campus Drive, Florham Park, New Jersey 07932.
6. Plaintiff UChicago Argonne, LLC, is an Illinois corporation with a principal place of business at 9700 S. Cass Avenue, Lemont, Illinois 60439.
7. On information and belief, Defendant Umicore N.V. is a company organized under the laws of Belgium, with a principal place of business at Broekstraat 31 Rue de Marais, 1000 Brussels, Belgium.
8. On information and belief, Defendant Umicore USA Inc. is a Delaware corporation with a principal place of business at 3600 Glenwood Avenue, Suite 250, Raleigh, North Carolina 27612.
9. On information and belief, Defendant Makita Corporation is a company organized under the laws of Japan, with a principal place of business at 3-11-8, Sumiyoshicho, 446-0072 Anjo 446-0072 Aichi, Japan.
10. On information and belief, Defendant Makita U.S.A. Inc. is a California corporation with a principal place of business at 14930 Northam Street, La Mirada, California 90638.
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11. On information and belief, Makita Corporation of America is a Georgia corporation with a principal place of business at 2650 Buford Highway, Buford, Georgia 30518.
12. The Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338 for Argonne and BASF’s claims arising under the patent and antitrust laws of the United States, including 35 U.S.C. § 271 et seq. and 15 U.S.C. § 2 et seq. The Court has jurisdiction pursuant to 28 U.S.C. § 1367 for BASF’s claims arising under Delaware’s state statutory and common law.
13. The Court has personal jurisdiction over Defendant Umicore USA Inc. because it is a Delaware corporation.
Rule of Civil Procedure 4(k)(2) because, on information and belief, it is not subject to jurisdiction in any state’s courts of jurisdiction, and because exercising jurisdiction is nevertheless consistent with the United States Constitution given that Umicore N.V. has sufficient contacts with the United States that relate to the claims in this case. On information and belief, a non-exhaustive list of Umicore N.V.’s contacts with the United States that relate to the allegations in this case include: (a) Umicore N.V. has delivered its products into the stream of commerce with the knowledge, understanding, and expectation that they will be incorporated into products purchased and sold in the United States; (b) Umicore N.V., either directly or through entities it wholly owns and controls, maintains offices, factories, and research facilities in 15 locations throughout the United States, including a location in Michigan that engages in On information and belief, Umicore S.A., Umicore N.V., and Umicore S.A./N.V. refer to the same entity. On information and belief, it is custom in Belgium for entities to use the S.A. and N.V. designations interchangeably, as one is the French designation and the other the Dutch designation, respectively.
Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 5 of 20 PageID #: 5 sales and marketing activities as well as applied technology research for Umicore N.V.’s rechargeable battery division; (c) Umicore also has sent employees to attend relevant battery trade conferences in the United States on at least two occasions in Novi, Michigan, and Ft.
Lauderdale, Florida; (d) around 2005, a representative from Umicore N.V.’s Specialty Oxides and Chemicals group arranged a meeting in the United States in order to negotiate with an American corporation for the opportunity to supply the company with lithium-ion battery materials; and (e) Umicore N.V. met with Argonne in the United States on multiple occasions to discuss a license for the BASF/Argonne patents.
15. The Court has personal jurisdiction over Makita Corporation, Makita U.S.A., Inc., and Makita Corporation of America because, on information and belief, those Defendants have committed acts of infringement in the District of Delaware, including at least because they each (directly and/or through their subsidiaries, divisions, groups, or distributors) advertise, market, offer for sale, import for sale and/or sell the infringing products at issue in this case in the District of Delaware.
16. Venue is proper in this Court under 28 U.S.C. §§ 1391(b) and (c), and 1400(b).
17. Lithium-ion batteries are used in a wide variety of rechargeable electronic devices sold worldwide, including power tools, smartphones, tablets, laptop computers, cameras and camcorders, and electric, hybrid, and plug-in electric vehicles.
18. Lithium-ion batteries include electrodes (a cathode and an anode), with lithium ions passing between the cathode and the anode during the batteries’ charge and discharge The cathodes for lithium-ion batteries can contain different chemical (“use”) cycles.
Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 6 of 20 PageID #: 6 compositions, and each composition provides a different combination of energy, power, safety, life, and cost benefits. Until recently, lithium-ion battery cathodes composed of lithium cobalt oxide (“LCO”) dominated the market. But beginning around 2006, the use of lithium-ion battery cathodes composed of lithium with nickel, cobalt, and another transition metal such as manganese increased substantially. By 2011, an estimated 32% of the lithium-ion batteries made used a cathode composed specifically of nickel, cobalt, and manganese (“NCM”), and that number is expected to increase to 40% by 2020.
The BASF/Argonne Patents Cover Two-Phase NCM Materials for NCM Cathodes
19. On January 13, 2004, the United States Patent & Trademark Office issued the ’082 Patent, entitled “Lithium Metal Oxide Electrodes for Lithium Cells and Batteries.” (Ex. A.) Argonne is the assignee and owner of the ’082 patent. BASF has an exclusive license to the ’082 patent.
20. On January 20, 2004, the United States Patent & Trademark Office issued the ’143 Patent, entitled “Lithium Metal Oxide Electrodes for Lithium Cells and Batteries.” (Ex. B.) Argonne is the assignee and owner of the ’143 patent. BASF has an exclusive license to the ’143 patent.
21. The ’082 and ’143 patents (the “BASF/Argonne patents”) disclose NCM cathodes made from NCM materials containing an excess amount of lithium and having two phases, referred to respectively in the claims of the patents as the “LiMO2” and “Li2M’O3” components of the material. The “excess” lithium incorporated in the cathode active material drives the formation of the second phase, Li2M’O3. In addition, the excess lithium increases the capacity of the battery, improves the cathode’s chemical stability, and provides improved battery characteristics, such as a reduction in capacity fade.
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22. Around 2009, BASF was looking at entering the battery market, and after conducting research and the required due diligence, BASF recognized that Argonne had developed significant cathode technology. In May 2009, BASF licensed the ’082 and ’143 patents from Argonne. By scaling-up the Argonne technology, BASF knew it would be positioned to enter the lithium-ion battery market and supply NCM materials to manufacturers of lithium-ion batteries.
23. To date, BASF has supplied samples of its NCM cathode materials to numerous worldwide manufacturers of lithium-ion batteries. BASF manufactures the materials at three locations in the United States: “precipitation” of NCM precursor material occurs in Troy, Michigan, “drying” occurs in Louisville, Kentucky; and “calcination” of the precursor materials occurs in Elyria, Ohio. BASF also procures precursor materials from third parties and BASF has recently announced its formation of a joint venture with Toda in Japan where both precursor precipitation and calcination production capacity is available. BASF’s NCM cathode active materials have both LiMO2 and Li2M’O3 phases, as required by the BASF/Argonne patents.
Umicore Makes and Sells a Dual-Phase NCM Material for NCM Cathodes
Umicore sells its NCM cathode active material for use in lithium-ion batteries made for power tools, portable electronics, electric, hybrid electric, and plug-in vehicles, and stationary energy storage devices.
25. Umicore bills itself as the leading global supplier of cathode materials. One out of every five rechargeable batteries ever made contains Umicore materials, according to Umicore refers to its nickel, manganese, and cobalt cathode active materials as “NMC” materials, while BASF refers to its product as “NCM” materials. That difference in naming convention is simply a labeling and marketing distinction; it does not reflect a difference in the products’ chemical structure.
Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 8 of 20 PageID #: 8 Umicore. Umicore maintains a substantial presence across multiple markets for lithium-ion cathode materials. For example, Umicore controls 50% of the market for LCO cathodes. And its share of the market for NCM cathode active materials grew exponentially from 0% in 2008, to 27% in March 2014, to 31% just six months later in September 2014.
26. Umicore is the largest supplier of NCM cathode active materials, with a 31% market share by sales volume, more than twice that of any other competitor.
27. Umicore claims that it supplies “all key players in the battery industry.” Industry reports indicate that Umicore’s customers include the largest battery cell manufacturers in the world, who, combined, account for 93% of the market for cylindrical lithium-ion battery cells (which are used in a variety of products, including laptop computers, power tools, and e-bikes).