Advanced Battery Patent Suit Ends in Cross-Licensing Deal


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 Avatar

Eric Lane

Eric Lane, the founder and principal of Green Patent Law, is an intellectual property lawyer and registered U.S. patent attorney in New York and is a member of the bar in New York and California. Eric has more than two decades of experience working with wind, solar PV, CSP, biofuels, and geothermal, energy storage technologies, carbon capture and sequestration, medical devices, data communications, mechanical, chemical, internet and software.