«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., ...»
28. The market for battery materials is forecasted to grow by 30% annually until 2020, and Umicore is prepared to capture a significant percentage of the expanding market, including 50% of the market for NCM battery materials for automotive batteries. For instance, Umicore touts that it is increasing its production capacity. Umicore seeks to monopolize the market for NCM materials (the relevant market).
29. On information and belief, and based on investigation, Umicore’s NCM materials contain excess lithium and the two phases, LiMO2 and Li2M’O3, claimed in the BASF/Argonne patents.
30. For instance, the NCM material in Makita’s 18V LXT Lithium-Ion 3.0 Battery (model BL1830) contains two phases, LiMO2 and Li2M’O3. On information and belief including Umicore’s public statements, the cathode active material in Makita’s battery packs for cordless drills is Umicore’s NCM material.
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31. 3M is the owner of three patents that also relate to materials for cathodes: U.S.
Patent Nos. 6,660,432, 6,964,828, and 8,241,791 (collectively, the “3M patents”). The priority dates for the BASF/Argonne patents pre-date those of the 3M patents.
32. The 3M patents disclose and are expressly limited to cathodes having NCM materials that are only a “single phase.”
33. On information and belief, including based on public statements by Umicore, 3M has licensed the 3M patents to Umicore.
Umicore Tells the Industry that Existing NCM Materials Are Single Phase and Therefore Covered by the 3M Patents, not the BASF/Argonne Patents
34. At the May 2014 Advanced Automotive Battery Conference, Dong Joon Ihm, the Director of Global Applied Technology for Umicore told a large audience of purchasers, manufacturers, and researchers of NCM materials that Umicore has a license to the 3M patents and suggested that the BASF/Argonne patents do not cover existing commercial NMC materials.
35. At the July 2014 China International Battery Fair, Umicore presented powerpoint slides to a large audience of purchasers, manufacturers, and researchers of NCM materials that the BASF/Argonne patents do not cover existing NCM materials because the patents exclude single-phase NCM materials. Umicore further told that audience that only the 3M patents cover existing commercial NCM materials, that Umicore has a license to the 3M patents, and that purchasing NCM materials from Umicore provides freedom to operate for manufacturers producing and using NCM cathodes. Umicore also showed and discussed press releases from 3M stating that the value of the 3M patents lies in the fact that they are directed to single phase and solid solution materials.
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36. Those statements are false because commercially available NCM materials, including those NCM materials manufactured by Umicore, regularly contain excess lithium and are dual phase. Manufacturers desire to produce high capacity (long run time) batteries, and dual-phase NCM materials containing excess lithium improve the capacity and functionality of lithium-ion batteries.
37. On information and belief including for the reasons described below, Umicore knew these statements were false. By its conduct, Umicore has created in the industry a putative requirement of a 3M patent license, which presents a significant barrier to any potential suppliers seeking to enter the market. And it is a barrier constructed willfully by Umicore on false pretenses.
Umicore Knows that Existing Umicore NCM Materials Are Dual Phase and Therefore Covered by the BASF/Argonne Patents, not the 3M Patents
38. Standard industry tests confirm that existing Umicore NCM materials contain the two phases required by the BASF/Argonne patents, not the single phase disclosed in the 3M patents. For instance, the NCM cathode material in Makita’s 18V LXT Lithium-Ion 3.0 Battery (model BL1830) contains two phases, the LiMO2 phase and the Li2M’O3 phase.
39. Transmission electron microscopy (“TEM”) is a well-known and widely accepted analytical technique employed in the lithium-ion battery industry for analyzing NCM materials and can be used to determine whether such materials are single or dual-phase. Indeed, the BASF/Argonne patents explain that the patented, dual-phase NCM materials and other NCM materials can be “unequivocally distinguished from one another” using TEM.3 Based on testing, including TEM with electronic diffraction and Energy Dispersive X-ray Spectroscopy (“EDS”) U.S. Patent No. 6,677,082, col. 4, ll. 26-28; U.S. Patent No. 6,680,143, col. 5, ll. 47-49.
Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 11 of 20 PageID #: 11 analysis, BASF confirmed that the NCM cathode material in Makita’s 18V LXT Lithium-Ion 3.0 Battery (model BL1830) contains two phases, LiMO2 and Li2M’O3.
40. On information and belief, Umicore’s processing recipe for its NCM material will show Umicore uses excess lithium to make its NCM material, which results in a second phase.
Because excess lithium improves certain features of NCM cathodes, the use of excess lithium is common in the industry. Scientific literature in the field indicates that NCM materials contain excess lithium and are the dual-phase material claimed in the BASF/Argonne patents.4 Moreover, Umicore is familiar with the technology disclosed in the BASF/Argonne patents, and it knows that excess lithium improves NCM cathodes. In discussions in 2005 and 2009, Umicore approached Argonne, seeking to license several patents related to lithium-ion battery technology, including the BASF/Argonne patents. During that period, Dr. Michael Thackeray (the first-listed inventor on the BASF/Argonne patents) identified the BASF/Argonne patents by patent number and presented information to Umicore explaining the chemistry and electrochemical operation of the cathodes covered by those patents. In addition, Dr. Thackeray specifically explained to Umicore in 2005 that dual-phase NCM cathodes with excess lithium exhibit improved electrochemical behavior and properties.
41. On information and belief, Umicore knows these and/or other facts which, contrary to its public statements at industry conferences, prove that there are NCM materials, including its own NCM materials, that contain excess lithium and are dual phase. Umicore is specifically aware of the BASF/Argonne patents, the excess lithium and dual-phase technology disclosed in those patents, and the importance of that technology to lithium-ion battery use and Karalee Jarvis, et al., Atomic Structure of a Lithium-Rich Layered Oxide Material for LithiumIon Batteries: Evidence of a Solid Solution, Chem. Mater. 3615 (2011).
Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 12 of 20 PageID #: 12 functionality. Umicore also knows that the 3M patents are limited to single-phase materials while only the BASF/Argonne patents cover dual phase.
42. In 2012, BASF began negotiations with a potential customer and lithium-ion battery manufacturer about BASF supplying that potential customer with NCM materials. BASF provided the potential customer with sample NCM active cathode materials, the parties reviewed and discussed the potential customer’s analytical and electrochemical results, and as a result of those discussions BASF provided additional samples. The parties also discussed in detail BASF’s production capabilities, BASF’s pricing, and the potential customer’s freedom to operate. As the parties pursued these negotiations, BASF was considered to be viable, longterm, high-quality supplier for NCM cathode materials. However, on information and belief, Umicore was and had been a major supplier of NCM materials to the potential customer.
According to the potential customer’s representative, after Umicore learned that the potential customer was considering BASF as a supplier of NCM materials, Umicore made clear that if the potential consumer bought NCM materials from BASF, they would face legal action, suggesting a threat of suit based on the 3M patents. Any such patent assertion would be based on the allegation that BASF’s NCM materials contain only a single phase, which BASF believes discovery will show Umicore knows to be false.
43. BASF is licensed under the BASF/Argonne patents to market, produce, and sell dual-phase NCM active cathode materials with excess lithium. Umicore, however, is not licensed under the BASF/Argonne patents. Although Umicore previously approached Argonne in an attempt to acquire a license to the BASF/Argonne patents, Argonne and Umicore did not Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 13 of 20 PageID #: 13 agree to a license. Instead, Umicore has a license to the 3M patents which gives Umicore only the right to make and sell single-phase NCM materials; they are not licensed and not permitted to market, produce, or sell dual-phase NCM active cathode materials with excess lithium because those materials practice the BASF/Argonne patents, not the 3M patents. Umicore nevertheless makes and sells dual-phase NCM materials having excess lithium; and because Umicore is aware of the BASF/Argonne patents and the scope of their claims disclosing dual-phase NCM cathodes, its infringement of the BASF/Argonne patents is willful.
44. Although Umicore does not have a license to the BASF/Argonne patents and it knows that it makes and sells dual-phase NCM material with excess lithium, Umicore’s conduct and baseless assertions and threats regarding patent protection in the NCM materials market have effectively excluded BASF from the NCM materials market and furthered Umicore’s anticompetitive position. Despite competitive pricing, quality materials, and ample production capacity, some customers are not willing to purchase NCM materials from BASF as a result of Umicore’s private and public conduct.
45. These exclusionary practices have resulted in significant financial harm to BASF.
BASF has lost out on billions of dollars of potential revenue from selling NCM materials because of Umicore’s misrepresentations to major purchasers in the NCM materials market. In addition, BASF has lost the ability to compete as a supplier for electric vehicle platforms expected to launch in 2016 and 2017.
46. Further, BASF’s reputation in the lithium-ion battery industry, both to NCMmaterial purchasers and NCM-material manufacturers, has been damaged by Umicore’s deceptive, tortious, and anticompetitive conduct.
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47. Finally, BASF expended significant resources in developing the capacity to manufacture high quantities of NCM cathode materials for lithium-ion batteries, and Umicore’s infringing and exclusionary conduct is preventing BASF from recouping any returns on those substantial investments. For instance, in 2012 BASF opened its new calcination production facility in Elyria, Ohio, which required an investment of more than $50 million. Moreover, construction of the Elyria facility was supported by a $24.6 million grant from the U.S.
Department of Energy, meaning Umicore’s acts of infringement and exclusion are damaging not only BASF but also the United States Government’s investments in improved battery technology.
48. BASF and Argonne incorporate and reallege all previous paragraphs as if fully set forth herein.
49. On information and belief, Umicore produces and sells NCM materials that are especially made for or adapted for use in infringing the ’082 Patent.
50. Umicore’s NCM material is not a staple article or a commodity of commerce suitable for substantial non-infringing uses.
52. On information and belief, Umicore has been and is encouraging others to directly infringe the ’082 Patent with knowledge of that infringement.
53. On information and belief, Umicore imports its NCM materials into the United States to be used in infringing products, and knows its customers import its NCM materials into the United States in infringing products and/or to be used in infringing products, including in Makita’s lithium-ion battery packs for cordless power tools.
Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 15 of 20 PageID #: 15 54. Umicore knows that cathodes for lithium-ion batteries containing Umicore’s NCM materials infringe the ’082 Patent, and knows that customers, including Makita, are directly infringing the ’082 patent with Umicore’s encouragement and aid.
55. Umicore has knowledge of the ’082 patent, knowledge that its actions as described above are inducing and/or contributing to the infringement of the ’082 patent, and knowledge that its NCM material lacks substantial non-infringing uses.
56. Umicore has been and is indirectly infringing the ’082 Patent by inducing infringement and/or contributing to the infringement of the ’082 patent by others.
58. BASF and Argonne incorporate and reallege all previous paragraphs as if fully set forth herein.
59. Makita makes, uses, sells, offers for sale, and/or imports into the United States lithium-ion battery packs for Makita cordless drills.
60. On information and belief, Makita’s lithium-ion battery packs for Makita cordless drills contain NCM materials, including NCM materials supplied by Umicore.
61. Defendant Makita has been and is directly infringing the ’082 patent by making, using, offering to sell, and/or selling in the United States products containing lithium-ion batteries produced using NCM materials, including NCM materials supplied by Umicore.
62. BASF and Argonne incorporate and reallege all previous paragraphs as if fully set forth herein.
Case 1:15-cv-00172-UNA Document 1 Filed 02/20/15 Page 16 of 20 PageID #: 16 63. On information and belief, Umicore produces and sells NCM materials that are especially made for or adapted for use in infringing the ’143 Patent.
64. Umicore’s NCM material is not a staple article or a commodity of commerce suitable for substantial non-infringing uses.