Advanced Battery Patent Suit Ends in Cross-Licensing Deal

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Previous posts (here and here) discussed the patent litigation involving A123 Systems Inc. (A123), a Boston area lithium-ion battery maker, Canadian utility Hydro-Quebec (H-Q), the exclusive licensee of U.S. Patent Nos. 5,910,382, 6,514,640, 7,955,733, 7,960,058 and 7,964,308 (collectively “Cathode Materials Patents”),and the Board of Regents of the University of Texas (UT), the owner of the patents, as well as H-Q’s recent complaint adding Valence Technology and Segway to the dispute.

The parties recently announced they had settled their disputes and entered into a settlement agreement and patent sublicense deal (see the A123 press release here).

Some details of the Patent Sublicense Agreement have been made public. Actually a cross-licensing deal, A123 has taken, or will take, a license to lithium metal phosphate patents developed at UT, a family of electrode metal carbon-coating patents, and several lithium metal phosphate patents licensed to H-Q by Nippon Telephone and Telegraph.

A Swiss-based alliance called LiFePO4+C Licensing AG, formed by H-Q, Sud-Chemie, Universite de Montreal and Centre National de la Recherche Scientifique, has taken, or will take, a license to two recently-issued battery patents owned by A123. A123′s original Nanophosphate patents, developed at MIT, are not part of the settlement.

The Cathode Materials Patents are entitled “Cathode materials for secondary (rechargeable) lithium batteries” and relate to host materials for use as electrodes in lithium ion batteries. The patented materials provide a larger free volume for lithium ion motion that allows higher conductivity and therefore greater power densities.

Both sides called the resolution a victory for the advanced battery market. Elie Saheb, Executive Vice President, Technology, for H-Q said the agreement “will help accelerate broad-based market penetration of lithium metal phosphate products.”

A123′s CEO, Dave Vieau, called the agreement “a win-win for the entire industry by paving the way for faster adoption” of phosphate-based lithium ion technology.

I’m sure we’re going to see much more cross-licensing activity in clean tech as green patent infringement suits continue to proliferate, move forward and reach resolution. The LED lighting sector, in particular, with companies patenting different features and components and litigation on the rise, is a likely candidate for cross licensing arrangements.

Eric Lane is a patent attorney at Luce, Forward, Hamilton & Scripps in San Diego and the author of Green Patent Blog. Mr. Lane can be reached at elane@luce.com.

About Author

Walter’s contributions to CleanTechies over the past 4 years have been instrumental in growing the publications social media channels via his ongoing editorial and data driven strategies. He is the founder and managing director of Sunflower Tax, a renewable energy tax and finance consultancy based in San Diego, California. Active in the San Diego clean technology community, participating in events sponsored by CleanTech San Diego, EcoTopics, and Cleantech Open San Diego, Walter has also been a presenter at numerous California Center for Sustainability (CCSE) programs. He currently serves as an adjunct professor at the University of San Diego School of Law where he teaches a course on energy taxation and policy.