By Eric Schweibenz and Tom Yebernetsky
On September 24, 2015, ALJ Thomas B. Pender issued the public version of Order No. 19 (dated September 14, 2015) in Certain Lithium Metal Oxide Cathode Materials, Lithium-Ion Batteries for Power Tool Products Containing Same, and Power Tool Products with Lithium-Ion Batteries Containing Same (Inv. No. 337-TA-951).

By way of background, this investigation is based on a February 20, 2015 complaint filed by BASF Corp. and UChicago Argonne LLC ("Complainants") alleging violation of Section 337 in the importation into the U.S. and sale of certain lithium metal oxide cathode materials, lithium-ion batteries containing same, and products with lithium-ion batteries containing same that infringe one or more claims of U.S. Patent Nos. 6,677,082 and 6,680,143.  See our February 23, 2015 and April 1, 2015 posts for more details on the complaint and notice of investigation, respectively.

According to the Order, Respondents Makita Corporation, Makita Corporation of America, and Makita U.S.A. Inc. (collectively, "Makita") filed a motion for partial summary determination of non-infringement.  Specifically, Makita sought a summary determination that certain battery models ("the non-accused products") do not infringe U.S. Patent No, 6,677,082 (the '082 patent) and U.S. Patent No. 6,680,143 (the '143 patent) (collectively, "the Asserted Patents").  Makita asserted that the non-accused products do not have positive electrodes having the claimed general formula xLiM02•(l-x)Li2M'03 because of the presence of a certain component that was redacted from the Order.  Despite Complainants' withdrawal of their infringement contentions with respect to the non-accused products, Makita further argued that summary determination was appropriate, because such products are within the scope of the Notice of Investigation and were subject to extensive discovery.

In opposition, Complainants asserted that they no longer accuse the non-accused products of infringement, and will not seek to include such non-accused products within the scope of any exclusion order.  Accordingly, Complainants contend that any summary determination with respect to those non-accused products would be an improper advisory opinion.  Additionally, Complainants disputed that certain redacted products are outside the scope of the asserted claims and that the redacted component is not part of the claimed general formula.

ALJ Pender held that genuine issues of material fact and law remain.  Specifically, ALJ Pender determined that he could not, as a matter of law, find that a positive electrode that includes the redacted component is outside the scope of the asserted claims.  Furthermore, ALJ Pender held that summary determination of non-infringement is not warranted because Complainants no longer accuse the non-accused products and agreed to exclude them from the scope of any exclusion order.  Accordingly, ALJ Pender denied Makita's motion for partial summary determination.