Monday’s announcement that it will initiate a Section 337 investigation into certain batteries and products containing them, 337-TA-1244, marks the first time in recent history that a battery company has filed a lawsuit with the US International Trade Commission (ITC) has design patent infringement. Battery patents typically cover new and useful features of a battery, e.g. B. a cathode composition, an electrode architecture, a battery housing or a management software. What is patented is seldom visible on a battery or product that a consumer might purchase. In this case, One World Technologies, Inc. and Techtronic Power Tools Technology Ltd. (“One World”) that a list of defendants infringed their battery patents by importing batteries that look like theirs.
THE FACTS ASSISTED
One World sells drills, circular saws and leaf blowers with cordless 18-volt lithium-ion batteries. In its ITC complaint, One World calls for general and specific exclusion and injunctive relief orders based on US Design Nos. D579,868 (the “868 Patent”), D580.353 (the “353 Patent”) and D593, 944 (the “944 patent”) against thirteen respondents.
These 18 V ONE + ® batteries can be used in the RYOBI ™ ONE + SYSTEM® from One World (see below):
One World claims that respondents’ products “embody that Specific visual housing designs for batteries that violate the asserted patents “(emphasis added), such as the following design from the ‘353 patent:
One World’s complaint does not mention what is in the defendant’s batteries or whether they are actually lithium-ion batteries. only that they look like One World batteries.
US patents come in one of three flavors: utility models to protect useful inventions; Plant patents for the protection of new plant varieties; and designs to protect the decorative features of an invention. The procurement of designs costs a fraction compared to utility models. Aside from some formalities, design patents are essentially just pictures of different views of an invention, with certain solid lines indicating what is claimed and certain dashed lines indicating what is not. It is the solid lines in the design that a jury, or in this case the ITC administrative judge, would compare to an accused product to determine a violation. Read our blog about the Normal Observer Standard for Determining Design Infringement.
Design patents currently have a patent term of 15 years, which is shorter than the standard term of 20 years for a utility model. Given how inexpensive they are to obtain compared to utility models, the return on investment (ROI) for design patents is natural when a single design prevents a competitor from copying the patented product.
Battery companies have rarely had litigation in the ITC. However, times are changing. Battery companies have been driven in part by advances in electric vehicles that are increasing in value and being more aggressive with their intellectual property rights.
For example, last year LG Chem and SKI exchanged ITC complaints related to battery patents for technologies in electric vehicles such as Jaguar-I-PACE and Audi e-tron. In one case, SKI filed a complaint against LG Chem related to US Patent No. 10,121,994. In another case, LG Chem asserted US Patents No. 7,662,517; 7,638,241; 7,709,152; and 7,771,877 against SKI. These patents relate to certain cathode-active material compositions and also to the pouches in which certain lithium-ion batteries are sealed – technologies that most EV owners will only see when they disassemble their vehicle’s battery packs.
With this in mind, One World’s complaint of infringement of the design for the appearance of a battery is all the more remarkable. For another example of the general upward trend in battery disputes recently, check out our blog about trade secret laws passed in the UK on an injunction by a US battery company, Celgard, against a Chinese company, Shenzhen Senior Technology Material Co. Ltd.
If successful, One World could impose an import ban on its competitors or force them to redesign their offending batteries. There may also be compensation for damages or loss of profit in the responsible district court. Either way, One World could get a significant ROI on their design patent. For reference, Apple received a half billion dollar judgment in 2018 for infringing a design for the appearance of the iPhone. Will 2021 see a successful verdict for One World for the appearance of their battery? Stay tuned.