Maxell, Ltd. v. Amperex Technology Limited

94 F.4th 1369

• Court: Court of Appeals for the Federal Circuit
• Decided: March 6, 2024
• Docket: 23-1194
• Status: Published

Opinion

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. ______________________ Case: 23-1194 Document: 39 Page: 2 Filed: 03/06/2024

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. Case: 23-1194 Document: 39 Page: 3 Filed: 03/06/2024

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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): LiaM bM cM dO2 1 2 3

[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 Case: 23-1194 Document: 39 Page: 4 Filed: 03/06/2024

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 Case: 23-1194 Document: 39 Page: 5 Filed: 03/06/2024

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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). Case: 23-1194 Document: 39 Page: 6 Filed: 03/06/2024

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. Case: 23-1194 Document: 39 Page: 7 Filed: 03/06/2024

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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 Case: 23-1194 Document: 39 Page: 8 Filed: 03/06/2024

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 Case: 23-1194 Document: 39 Page: 9 Filed: 03/06/2024

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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