The China National Intellectual Property Administration (CNIPA) found Amperex Technology Limited (ATL) (宁德新能源科技有限公司)’s Chinese Patent No. 201810123144.4 to be wholly invalid in its No. 55016 order dated March 29. The patent covers a positive active material and lithium-ion battery (LIB). The petition to challenge the validity of the patent was filed by Wuxi Maxell Energy Co., Ltd. (无锡麦克赛尔能源有限公司), Japanese consumer electronics company Maxell, Ltd.’s Chinese unit, in September 2021.
Founded in 1999, ATL is the world’s largest LIB developer and producer of consumer electronics products. The Ningde city, Fujian province-based company was acquired by Japanese multinational electronics company TDK Corporation in 2005. ATL spun off the Contemporary Amperex Technology Co., Ltd. (CATL) (宁德时代新能源科技股份有限公司) in 2011, which has grown into the world’s largest LIB developer and producer for electric vehicles (EVs) and energy storage systems. CATL, listed as one of China’s largest-cap stocks, is independent of ATL. Ibaraki city, Osaka Prefecture-headquartered Maxell was formed in 1960, starting out as a dry cell manufacturing plant. Its main products are batteries, wireless charging products, storage devices, LCD/laser projectors, and functional materials. The company got listed on the First Section of the Tokyo Stock Exchange in 2014.
In 2021, ATL brought two actions against Wuxi Maxell Energy Co., Ltd. with China’s Fuzhou Intermediate People’s Court for infringing its patents. Wuxi Maxell countered the lawsuits with four petitions filed with the CNIPA to challenge the validity of ATL’s three utility model patents and one invention patent in September 2021. One hearing was held in the two cases respectively in October 2021. The patent that has just been invalidated by the CNIPA was presumed to be one asserted by ATL in one of the two lawsuits.
The lawsuits lodged in China seem to be extensions of the ones between the parties in the U.S. On March 27, 2020, Maxell contacted ATL to discuss a “mutually beneficial” licensing agreement, in which ATL would pay to license Maxell’s LIB patents. The parties spent just over a year negotiating and no agreement was reached. Shortly after a standstill agreement lapsed, ATL filed a declaratory judgment action with the United States District Court for New Jersey in May 2021, seeking a declaratory judgment that the ATL LIB products including, without limitation ATL’s Cell Nos. 465867, 575577N, 785075, and “all ATL products substantially similar in form, function, manufacture, or design” did not infringe any of Maxell’s patents U.S. Patent No. 8,691,446, No. 9,350,019, No. 9,077,035, and No. 9,166,251. The first three patents relate to a “nonaqueous secondary battery and method of using the same.” The fourth patent relates to a “battery separator and nonaqueous electrolyte battery.” Two days later, Maxell filed a patent infringement action against ATL in the United States District Court for the Western District of Texas. In January, the United States Court of Appeals for the Federal Circuit (CAFC) denied ATL’s petition for mandamus relief from an order of New Jersey federal court transferring its complaint to Texas federal court. The cases are pending.
The docket numbers of the two lawsuits between the parties filed in China are （2021）闽01民初2283号, whose English transliteration is 2283, first instance (初), civil case (民), (2021) Fuzhou Intermediate People’s Court (（2021）闽01), and （2021）闽01民初2285号, whose English transliteration is 2285, first instance (初), civil case (民), (2021) Fuzhou Intermediate People’s Court (（2021）闽01).
