The announcement on Monday of the opening of a section 337 investigation into Some batteries and products containing the same, 337-TA-1244, is notable as the first time in recent memory that a battery company has sued the United States International Trade Commission (ITC) for design patent infringement. Battery patents generally cover new and useful features of a battery, for example cathode composition, electrode architecture, battery box or management software. What is patented is rarely seen on a battery or product that a consumer might buy. In this case, One World Technologies, Inc. and Techtronic Power Tools Technology Ltd. (“One World”) allege that a list of defendants infringed their battery patents by importing batteries which see like theirs.
The alleged facts
One World sells electric drills, circular saws and leaf blowers that include 18-volt cordless lithium-ion rechargeable batteries. In its ITC complaint, One World seeks general and specific exclusion orders and cease and desist orders based on U.S. design patents # D579,868 (the “‘868 patent”), D580,353 ( the “’353” patent), and D593,944 (the “’ 944” patent) against thirteen respondents.
These 18V ONE +® batteries can be used in the One World RYOBI ™ ONE + SYSTEM®, shown below:
One World alleges that the respondents’ products “embody the specific visual designs of the battery case which infringe the claimed patents ”(emphasis added) such as the following design of the ‘353 patent:
One World’s complaint does not mention what is inside the Respondent’s batteries, or even whether they are genuine lithium-ion batteries; just that they look like One World batteries.
US patents come in three forms: utility patents to protect useful inventions; plant patents for the protection of new plant varieties; and design patents to protect the ornamental features of an invention. Design patents cost a fraction to procure compared to utility patents. Aside from a few formalities, design patents are really just pictures of various views of an invention, with some solid lines indicating what is claimed and some dotted lines indicating what is not. These are the solid lines of the design patent that a jury, or in this case the ITC administrative judge, would compare to an accused product to determine infringement. See our blog on the Ordinary Observer Standard for Determining Design Patent Infringement.
Design patents currently have a patent term of 15 years, which is shorter than the standard 20-year term for a utility patent. But given their low cost of obtaining compared to utility patents, the return on investment (ROI) of design patents is evident if a single design patent prevents a competitor from copying the patented product.
Battery companies rarely litigated before the ITC. However, times are changing. Battery makers, in part thanks to advances in electric vehicles, are rising in value and becoming more aggressive with their intellectual property rights.
For example, LG Chem and SKI have exchanged ITC complaints over the past year over battery patents covering technology in electric vehicles such as the Jaguar-I-PACE and the Audi e-tron. In one, SKI filed a lawsuit against LG Chem regarding US Patent No. 10,121,994. In another, LG Chem claimed US Patents No. 7,662,517; 7,638,241; 7,709,152; and 7,771,877, against SKI. These patents relate to certain cathodic active material compositions as well as the pouches in which some lithium-ion batteries are sealed – technologies that most electric vehicle owners will never see unless they remove the battery packs from their vehicle.
In this context, One World’s complaint for infringement of a design patent for the appearance of a battery is all the more notable. Another example of the general rise in battery litigation recently, see our blog about the injunction that a US battery company, Celgard, obtained against a Chinese company, Shenzhen Senior Technology Material Co Ltd., in the UK under recently passed trade secret laws.
Take away food
If successful, One World could obtain an import ban against its competitors, or force them to redesign their counterfeit batteries. He could also obtain damages or restitution of profits in the context of the related district court proceedings. Either way, One World could generate a substantial return on investment in its design patent. For reference, in 2018, Apple won a half-billion dollar judgment for infringing a design patent covering the appearance of the iPhone. Will 2021 see a successful judgment for One World for how their battery looks? Stay tuned.
© Copyright 2021 Squire Patton Boggs (US) LLPRevue nationale de droit, volume XI, number 36