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Umicore SA has acquired three patents related to making next-generation lithium-ion batteries from 3M Co. that could be valuable ammunition in its patent infringement battle with BASF SE.
Umicore said it has acquired “all existing and future” licensing rights to three Nickel Manganese Cobalt (NMC) battery material patents (U.S. Patent Nos. 6,677,082, 6,660,432 and 7,211,237) that it had previously used under a licensing agreement with 3M. The patents are valid in China, South Korea, Japan, Europe and the United States and would expire between 2021 and 2024, Umicore said in a Jan. 10 press release.
The deal gives Umicore rights to enforce the three patents, which it did not have while it was licensing the patents from 3M.
The acquisition comes after the U.S. International Trade Commission said in December that Brussels-based Umicore had infringed two patents that belong to the government’s Argonne National Laboratory and are licensed to BASF. The agency’s decision that Umicore must stop importing certain battery materials into the U.S. is currently under a 60-day presidential review that will end after President-elect Donald Trump takes office Jan. 20.
In some instances, companies make defensive patent purchases and acquire new patents during ongoing infringement lawsuits, a move that can help bring about settlements.
Umicore’s newly acquired patents from 3M could be useful in its fight with BASF, Kent Richardson, a partner at Richardson Oliver Law Group, said. Earning royalties from 3M’s licenses as well as the ongoing patent issue with BASF were “likely a part of Umicore’s return on investment calculation,” he said.
A spokesman for Umicore, however, declined to comment on whether the company plans to use the patents against BASF to force a settlement. The 3M patent acquisition deal “stands on it own merits and should not be seen as a defensive move,” the spokesman said.
BASF and Argonne complained to the ITC in February 2015 that some products sold and imported by Umicore infringed their U.S Patent Nos. 6,677,082 and 6,680,143 for “lithium metal oxide electrodes for lithium cells and batteries.” The patents can be used to make numerous products, including electric vehicles and medical device applications.
Umicore’s acquisition of 3M patents “do not affect the International Trade Commission’s final determination” on Argonne and BASF’s dispute with Umicore, Matthew Lepore, senior vice president, general counsel and chief compliance officer at BASF, said in an email.
“BASF and Argonne look forward to the completion of the presidential review period and the enforcement of the exclusion order against Umicore’s infringing products,” Lepore said.
BASF also sued Umicore in the U.S. District Court for the District of Delaware for infringing the same patents. That suit has been stayed until the ITC case is resolved.
In December the Patent and Trademark Office’s Patent, Trial and Appeal Board canceled claims in BASF patents based on four challenges brought by Umicore in 2015. Those patents relate to materials different from the NMC patents. BASF has appealed to U.S. Court of Appeals for the Federal Circuit.
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