Advanced Electrolyte Technologies LLC et al v. ESDI LLC et al

Filing 72

ORDER regarding Claims Construction. ORDER SETTING Scheduling Conference for 8/10/2018 at 02:00 PM before Judge Lee Yeakel. Signed by Judge Lee Yeakel. (lt)

IN THE IJNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TEXAS
AUSTIN DIVISION

ADVANCED ELECTROLYTE
TECHNOLOGIES LLC AND
UBE INDUSTRIES, LTD.,

P

§
§
§
§

PLAINTIFFS,

§
§

V.

§

CAUSE NO. A:17-CV-0030-LY

§

SAMSUNG SDI CO., LTD,
SAMSUNG SDI AMERICA, INC.,
SAMSUNG ELECTRONICS CO., LTD
AND SAMSUNG ELECTRONICS
AMERICA, INC.,
DEFENDANTS.

§
§

§
§
§
§

MEMORANDUM OPINION AND ORDER REGARDING
CLAIMS CONSTRUCTION
Before the court are the parties' Joint Claim Construction Statement filed November28, 2017

(Clerk's Document No. 54); Plaintiffs Advanced Electrolyte Technologies LLC ("Advanced
Electrolyte") andUBE Industries, Ltd.'s("UBE") and Defendants Samsung SDI Co., Ltd., Samsung
SDI America, Inc., Samsung Electronics Co., Ltd., and Samsung Electronics America, Inc.'s

(collectively "Samsung") Opening Claims Construction Briefs ified January 4, 2018 (Clerk's

Document Nos. 55 & 56), and Advanced Electrolyte and UBE and Samsung's Reply Claim
Construction Briefs fIled January 18, 2018 (Clerk's Document Nos. 58 & 59), Samsung's Notice of
Supplemental Authority in Support of Opening and Reply Claim Construction Briefs ified February
8, 2018 (Clerk's Document No. 63), and Samsung's Notice

of the Patent Trial and Appeal Board's

Institution Decisions on the Inter Partes Review Petitions Challenging the '809 and '001 Patents filed
March 26, 2018 (Clerk's Document No. 68) ("Samsung's Notice")

14:1414

The court held a claims-construction hearing on February 9,2018. See Markman v. Westview

Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). At issue
are claim terms in United States Patent No. 6,033,809, titled, "Lithium Secondary Battery and

Electrolyte Thereof," ("809 patent"). Also at issue are claim terms in United States Patent Nos.,
6,927,001, ("001 patent") and 9,742,033, ("033 patent"), both titled "Non-Aqueous Electrolytic
Solution and Lithium Battery." Additionally, with regard to the '809 patent, the court considered

reexamination certificate No. US 6,033,809 Cl, which canceled some claims, confirmed the
patentability of some claims, and added new claims. The court refers to the three patents collectively
as the "asserted patents." The court having considered the asserted patents, and their prosecution

histories, the parties' briefing, the applicable law, and arguments of counsel, the court renders its

order with regard to claims construction.
I.

Introduction
A common issue that consumers experience with their electronic devices, such as phones,

tablets, and toys, is that with use, over time, the batteries that power such devices, often called
secondary, or rechargeable, batteries, hold less of a charge. This issue comes about because the

energy-storage capacity ofthe secondary batteries, such as a secondary lithium-ion battery, degrades

after each successive discharge-recharge cycle. This loss is cumulative. After a number ofdischarge-

recharge cycles, the capacity ofa lithium-ion battery could be 30% to 50% less than when the battery
was new. This issue leads the consumer to either make do with an impaired deviceone that must

frequently be connected to a chargeror bear the expense of replacing the battery. Battery life is,
therefore, an important sales-and-marketing issue for producers of electronic devices that use the

battery products accused of infringement in this action.
2

UBE is the owner and assignee of the asserted patents and Advanced Electrolyte is the
exclusive licensee

of all right, title, and interest in and under the asserted patents. Sanisung argues

that the asserted patents fail to provide adequate guidance for determining what is within or outside

the scope of the claims.

II.

Legal Principles of Claim Construction
Determining infringement is a two-step process. See Markman, 52 F.3d at 976 ("[There are]

two elements of a simple patent case, construing the patent and determining whether infringement

occurred

.

.

.

."). First, the meaning and scope of the relevant claims must be ascertained. Id.

Second, the properly construed claims must be compared to the accused device. Id. Step one, claim

construction, is the current issue before the court.
The court construes patent claims without the aid ofa jury. See Markinan 52 F.3d at 979.
The "words ofa claim 'are generally given their ordinary and customary meaning." Phillips v. A WH
Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp

v.

Conceptronic,

Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). The ordinary and customary meaning of a claim term is

the meaning that the term would have to a person of ordinary skill in the art in question at the time

ofthe invention. Id. at 1313. The person of ordinary skifi in the art is deemed to have read the claim
term in the context of the entire patent. Id. Therefore, to ascertain the meaning of claims, courts
must look to the claims, the specification, and the patent's prosecution history. Id. at 13 14-i 7;

Markman, 52 F.3d at 979.
Claim language guides the court's construction of claim terms. Phillzps, 415 F.3d at 1314.

"[T]he context in which a term is used in the asserted claim can be highly instructive." Id. Other
claims, asserted and unasserted, can provide additional instruction because "terms are normally used

3

consistently throughout the patent." Id. Differences among claims, such as additional limitations in
dependent claims, can provide further guidance. Id.
Claims must also be read "in view of the specification, of which they are a part." Markman,
52 F.3d at 979. The specification "is always highly relevant to the claim construction analysis.

Usually, it is dispositive; it is the single best guide to the meaning of a disputed term." Teleflex. Inc.
v.

Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002) (internal citations omitted). In the

specification, a patentee may define a term to have a meaning that differs from the meaning that the

term would otherwise possess. Phillips, 415 F.3d at 1316. In such cases, the patentee's lexicography
governs. Id. The specification may also reveal a patentee's intent to disclaim or disavow the claim's
scope. Id. Such intentions are dispositive for claim construction. Id. Although the specification may
indicate that certain embodiments are preferred, particular embodiments appearing in the specffication
will not be read into the claims when the claim language is broader than the embodiment. Electro
Med. Svs., S.A. v.

ooperLfe Scis., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994).

The prosecution history is another tool to supply the proper context for claim construction

because it demonstrates how the inventor understood the invention. Phillips, 415 F.3d at 1317. A
patentee may also serve as his own lexicographer and define a disputed term in prosecuting a patent.
Home Diagnostics Inc.

v.

LfeScan, Inc., 381 F.3d 1352, 1356 (Fed. Cir. 2004). Similarly,

distinguishing the claimed invention over the prior art during prosecution indicates what the claims
do not cover. Spectrum

Int'l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed.

Cir. 1988). The

doctrine of prosecution disclaimer precludes patentees from recapturing specific meanings that were

previously disclaimed during prosecution. Omega Eng 'g Inc.

ru

v.

Raytek Corp., 334 F.3d 1314, 1323

(Fed. Cir. 2003). Disclaimers of claim scope must be clear and unambiguous. Middleton Inc. v. 3M
Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002).

Although, "less significant than the intrinsic record in determining the legally operative
meaning of claim language," the court may rely on extrinsic evidence to "shed useful light on the

relevant art." Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises
may help the court understand the underlying technology and the manner in which one skilled in the
art might use claim terms, but such sources may also provide overly broad definitions or may not be
indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the

court in determining the particular meaning of a term in the pertinent field, but "conclusory,
unsupported assertions by experts as to the definition of a claim term are not useful." Id. Generally,
extrinsic evidence is "less reliable than the patent and its prosecution history in determining how to

read claim terms." Id. Extrinsic evidence may be useful when considered in the context of the
intrinsic evidence, Id. at 1319, but it cannot "alter a claim construction dictated by a proper analysis

of the intrinsic evidence." On-Line Tee/is., Inc.

v.

Bodenseewerk Perkin-Elmer GmbH, 386 F.3d

1133, 1139 (Fed. Cir. 2004).
Indefiniteness

A claim is indefinite if it does not reasonably inform a person of ordinary skill in the art of the
claim scope. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1383-84 (Fed. Cir. 2005).

A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the
patent, and the prosecution history fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention. Nautilus, Inc.

1'.

Biosig Instruments, Inc., 134 S. Ct. 2120, 2124

(2014). Even if a claim term's definition can be reduced to words or the patentee can articulate a
5

definition supported by the specification, the claim is still indefinite if a person of ordinary skill in the

art cannot translate the definition into meaningfully precise claim scope. Haliburton Energy Sen's.,
Inc.

III.

v.

M-ILLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008).
Discussion
A.

Person

of ordinary

skill in the art

With regard to each of the asserted patents, the parties agree that a person of ordinary skill
in the art is a person with working knowledge of lithium secondary batteries and electrolytes for

lithium secondary batteries, in addition to an understanding of basic chemistry, or chemical
engineering. Such knowledge and understanding would be acquired from a bachelor's degree in
chemistry, physics, or electrical or chemical engineering. In addition, a person skified in the art would

have at least three years of practical experience working in the field of lithium-ion batteries and
electrolyte technology, or a closely related field.
B.

Disputed terms

Neither Advanced Electrolyte nor UBE has identified any term, phrase, or clause that requires
construction by the court. Further, they believe an ordinary person skilled in the art would have no
difficulty understanding any of the terms, phrases, or clauses Samsung argues require construction.

The parties dispute the construction of five terms. The following table summarizes the parties'
positions regarding constructions of the disputed terms.

Ti.)Ji'?

1.

Plain and ordinary meaning.
Not indefinite.

"main components"

('809 patent, Claim

Indefinite under 35
§ 112,112

U.s.c.

Plain and ordinary meaning.
Not indefinite.

Indefinite under 35

u.s.C.

"composed of' plain and
ordinary meaning as an open
transition phrase.

"anode consisting of a
graphite-based substance"

Plain and ordinary meaning.
Not indefinite.

Indefinite under 35 U.S.C.
§ 112, ¶ 1; ¶ 2

Plain and ordinary meaning.
Not indefinite.

Indefinite under 35 U.S.C.
§ 112, ¶ 2

1)

2. "0.1 to 4% by weight,

based upon the total weight
of the non-aqueous solvent,
of a sultone derivative"

('809 patent, Claims

1

§

112, ¶ 2

& 9)

3. "anode is composed

of a

material containing graphite"

('809 patent, Claim 1)
"anode composed of a
material containing graphite"

('809 patent, Claim 9)
4. "both of said two organic
compounds have a reduction

potential higher than
reduction potentials of the
cyclic and chain carbonates"
('001 patent, Claims

1

&

9)

5. "30 to 50 volume percent

of a cyclic carbonate, based
on a total volume of the nonaqueous solvent"

('033 patent, Claim 1)

1.

"main components"

Samsung contends that "main components," as used in the '809 patent, Claim 1, is an
indefinite term because it is subject to multiple, equally reasonable, interpretations, and the intrinsic
7

record provides no guidance regarding which meaning applies. Claim 1 of the '809 patent provides,
"the non-aqueous solvent contains, as main components, a cyclic carbonate and a linear carbonate
and 0.1 to 4% by weight, based upon the total weight

derivative having.

. .

of the non-aqueous solvent, of a sultone

." Advanced Electrolyte and UBE respond that the term should be construed

to have its plain and ordinary meaning because "main components" is a typical descriptor in lithium-

battery arts.
Issue is joined as to the meaning of "main" as an adjective for "components." The parties
agree that components refers generally to the chemical compounds present in the non-aqueous
solvent.

Samsung bears the burden of showing by clear-and-convincing evidence that "main

components" is an indefinite term as used in Claim 1. Biosig Instruments, Inc. v. Nautilus, Inc., 783
F.3d 1374, 1377 (Fed. Cir. 2015).
Included with Samsung' s Notice, filed March26, 2018, is the Patent Trial and Appeal Board's

("PTAB") decision to deny institution of inter partes review with regard to the '809 patent. See
Samsung SDI Co. Ltd.

v.

UBE Indus., No. 1PR2017-021 15 (P.T.A.B. March 12, 2018). By the

decision, the PTAB, inter alia, construed "main components" as including not only a cyclic carbonate
and linear carbonate, but also a sultone derivative:

The '809 patent teaches that these problems are solved by including
as "main components" of the non-aqueous solvent in the lithium
secondary battery a cyclic carbonate, a linear carbonate, and a sultone
derivative that has the following general formula (I)

.....

Id. at 3-4. The PTAB did not reach the issue of indefiniteness, as it declined to institute an IPR

proceeding based on other grounds. Id. at 20-21.

Decisions regarding requests for reexamination by the PTAB often assist a court with claims

construction. See VirtualAgility Inc.

v.

Salesforce.com, Inc., 759 F.3d 1307, 1314 (Fed. Cir. 2014).

Despite ultimately denying Samsung's request for an IPR proceeding, the PTAB order included a

construction for the disputed term "main components." This court's claim construction is informed
and aided by the additional evidence of the PTAB's construction. See e.g., e-Watch, Inc.

1'.

ACTi

Corp., 2013 WL 6334372, at *7 (W.D. Tex. Aug. 9, 2013) ([PTAB] decision becomes part of

patent's intrinsic record).
Samsung argues that Advanced Electrolyte and UBE ignore the fact that the patentee failed

to indicate which of several meanings applies to the word "main." Should "main" be interpreted as
meaning chief, principal, leading, or most important? And, even if as argued by Advanced Electrolyte
and UBE, "main" means chief in size, the scope of the claim remains unclear, as lacking is an

objective boundary for the degree term, main. Samsung contends that reasonable minds of those
skilled in the art can differ as to which meaning applies, and therefore the term is indefinite.

In support of its argument Samsung refers the court to the Federal Circuit's analysis

of the

term"minimal" inBerkheimerv. HP Inc., 881 F.3d 1360, 1363-64 (Fed. Cir. 2018). TheBerkheimer
court found no clear error in the district court's conclusion that the term "minimal redundancy"
lacked an objective boundary, as missing from the patent was an indication to a person skilled in the
art as to how much redundancy was minimal. Id. at 1364. The Berkheimer court observed however,

that although in light of the evidence presented, minimal was indefinite, not all terms of degree in all

patents are necessarily indefinite. Id.
To the extent Samsung argues that a person skilled in the art cannot determine how the '809

patent intended to measure solvent amounts, whether by weight or volume, in the patent, weight

ratios, from which weight percentage is directly calculable, are the default form ofmeasurmg amounts

of solvents as in accordance with standards in the art of lithium batteries. Here, all of the examples
reflected in the '809 patent use weight ratios or percentages and the claims of the '809 patent use
exclusively weight percentages.

In reviewing Advanced Electrolyte and UBE's citations to the patent, the prior art in the

prosecution history, the testimony of Brett Lucht, UBE's expert, and the PTAB's decision dated
March 12, 2018, all show that the meaning of "main components" is that the amount of linear and
cyclic carbonates together with a sultone derivative weighing within a percentage range, provides

adequate certainty to one skilled in the art about what are the main components of the non-aqueous
solvent. The court concludes that Samsung has failed to show by clear-and-convincing evidence that

"main components" is an indefinite term to someone ordinarily skified in the art of lithium-ion

batteries.
2. "0.1 to 4% by weight, based upon the total weight

of the non-aqueous solvent, of a sultone

derivative"
Samsung contends that this phrase as used in the '809 patent, Claims

1

and 9 is indefinite

because it fails to inform with reasonable certainty someone with ordinary skill in the art which
claimed components are included in the non-aqueous solvent. Samsung contends that it is unclear

whether the additive sultone derivative is a solvent or a solute, and whether it is to be counted as part

of the total weight of the non-aqueous electrolyte solution. Advanced Electrolyte and UBE disagree
that this portion is indefinite, and contend that the plain language, in light of the specification, points
to the meaning the words conveythe claimed amount of a sultone derivative is 0.1 to 4% by weight
based on the total weight of the non-aqueous solvent.

10

According to Lucht, primary solvents and additive solvents are all fundamentally solvents in
the lithium-ion battery arts because both primary and additive solvents dissolve lithium salts. The

'809 patent treats the primary solventscyclic carbonates and linear carbonatesand additive

solventsthe sultone derivativeboth as parts ofthe total weight ofthe non-aqueous solvent. Lacking
is any intrinsic evidence that contradicts this position.

The court concludes that Samsung has failed to show by clear-and-convincing evidence that
the phrase "0.1 to 4% byweight, based upon the total weight ofthe non-aqueous solvent, ofa sultone
derivative" is indefinite.

composed of a material containing graphite"
('809 patent, Claim 1)
"anode composed of a material con taininL' Rraphite"
('809 patent, Claim 9)
3. "anode is

a.

"composed of" or proposed "consisting of"

Samsung argues that "composed of' as used here is a closed term, and the more appropriate

closed term the court should adopt is "consisting

of" Advanced Electrolyte and UBE respond that

there is no presumption that "composed of' indicates a closed group, and the intrinsic record reflects

that it should be afforded an open construction.
The '809 patent explains the various substances an anode may have, including "carbonaceous

materials having a graphite type crystal structure" such as "pyro[ly]tic carbons, cokes,
graphite, artificial graphite

.

.

.

.

.

.

natural

[and] carbon fibers." '809 patent, Col. 3:55-67. The powdered

carbonaceous materials are mixed with binders and solvents. Id. at Col. 4:35-41. That mixture is
then "coated on a copper foil, followed by drying and pressing to prepare an anode." Id. at Col. 4:3 941. Advanced Electrolyte and UBE argue that this indicates that the material for an anode is made

11

up of many different substances in addition to graphite, and therefore, the use of "composed

of'

should be considered an open term. The court agrees, and the term "composed of' will be afforded
its plain and ordinary meaning in the context of the specification.
b. "containing" or proposed "consisting"

During the claims-construction hearing, the parties agreed that "containing" is the same as

"comprising," both of which are broad, open terms, and neither indicates any exclusion of other
elements.

See Mars

v.

H.J.

Heinz Co.,

377 F.3d 1369, 1375 (Fed. Cir. 2004) ("comprising" and

"containing" are open-ended terms). Further, the parties agreed that containing and comprising are
different from "consisting," which is a closed term. As related to the issue here, the parties agree that

the "material" referred to in the '809 patent, Claims

1

and 9 need not only consist of a single type of

graphite, but may include a combination of graphites. Thus, the material may be solely natural

graphite, solely artificial graphite, or some some combination of both. The court declines to
substitute "consisting" for "containing" as used in the '809 Patent, Claims

1

and 9.

"a material containing graphite" or proposed "anode containing a graphite-based
substance"
c.

Samsung proposes that the court reword the phrase in the '809 patent, Claims

1

and 9, "a

material containing graphite" to "anode containing a graphite-based substance." The court finds no
basis in the claim language, specification, or prosecution history to rewrite this plain and easily

understood claim language. The court concludes that each of the words in the phrase, "a material
containing graphite"alone and in combinationhave an easily understood meaning.

12

4. "both of said two organic compounds have a reduction potential higher than reduction potentials
of the cyclic and chain carbonates"
('001 patent, Claims 1 & 9)

Samsung argues that this phrase is indefinite as it "is used by the patent in an undefined

manner and contrary to its generally understood meaning in the art." Samsung contends that what
is missing from the patent is a proper test or method to measure and determine reduction potential,

which generally means the voltage at which a compound is electrochemically reduced, that is, the

voltage at which a chemical decomposes.

A chemical with a higher reduction potential will decompose before a chemical with a lower
reduction potential. Additives such as the organic chemicals vinylene carbonate (VC) and 1,3
propanesultone (PS), have higher reduction potentials than lithium metal or other chain carbonates.
Thus, the organic additivesVC or PSwffl decompose before other chain or cyclic solvents. When

the organic additives decompose, they cover the surface of the negative electrode with an inactive

materiala passivation layer.

That inactive material or passivation layer, stops the further

decomposition of the other solvents, the practical result being a slower loss of battery discharge
capacity over time.
Samsung posits that what is absent from the '001 patent are: (1) a proper method to

determine the reduction potential for the "said two organic compounds; " (2) a method to determine

the reduction potential for the cyclic and chain carbonate compounds; and finally, (3) a method to
compare the two measures against each other, such that what is revealed is that the reduction

potential for the organic compounds will reflect a higher reduction potential than the cyclic and chain
carbonate compounds. Samsung advocates for a "peak method" of determining reduction potential,
contending that is the proper method of determining reduction potential.
13

Advanced Electrolyte and UBE respond that the plain language in light of the '001 patent's
specification points directly to the meaning the words convey, and the clause is not indefinite. And,

more importantly, they argue that the '001 patent sets forth a proper method or test to determine
reduction potential.
Advanced Electrolyte and UBE argue that there are two commonly accepted methods to

measure reduction potential in the context of lithium-ion batteries. One method is by decreasing
voltage at a fixed rate, for example, 1 mV per second, and measuring the resulting current. This
method, argues Advanced Electrolyte and UBE is described in the '001 patent. Col.4: 61-65.
Alternatively, another method is to apply a constant current to the compound, and the rate of change

of the voltage over time is measured. In whichever method is used to determine reduction potential,
the test creator is expected

only

to explain the method and identify the necessary parameters.

Advanced Electrolyte and UBE contend that the '001 patent discloses all the necessary parameters
to perform a reduction-potential test without any undue experimentation, and the description in the
'001 patent is sufficient for one of skill in the art to reproduce the test.

Advanced Electrolyte and UBE defend the choice of their tests for determining reduction

potential because their methods make the arbitrariness of measuring go away. With a fixed value,
when the voltage hits the set value, one knows what the voltage is, and that provides the necessary

certainty in testing reduction potential.
The '001 patent discloses all the necessary parameters to perform a reduction-potential test

without any undue experimentation. The court concludes that Samsung has failed to show by clearand-convincing evidence that this phrase is indefinite to someone ordinarily skilled in the art of

lithium-ion batteries.
14

5. "30 to 50 volume percent

of a cyclic carbonate, based on a total volume of the non-aqueous

solvent"
('033 patent, Claim 1)
The phrase appears in the following context in Claim 1:

A non-aqueous electrolytic solution, comprising:
a non-aqueous solvent comprising from 30 to 50 volume percent of
a cyclic carbonate, based on a total volume of the non-aqueous
solvent;
1.

Samsung contends this phrase is indefinite regarding the total-volume calculation of the non-

aqueous solvent for essentially the same reasons Samsung urged with respect to the challenged phrase
in the '809 patent regarding the weight calculation ofthe non-aqueous solvent, "0.1 to 4% by weight,

based upon the total weight of the non-aqueous solvent, of a sultone derivative." Here, Samsung
argues that the '033 patent provides conflicting guidance about what components are included in
calculating the "total volume of the non-aqueous solvent." Samsung contends that no one can know

whether the nitrile or sultone additive solvents, the adiponitrile and the S=O group-containing
compound, which sometimes act as solvents, are to be included in the total-volume calculation.
Samsung contends that one ordinarily skilled in the art would not know which compounds to include
in the calculation of the proportion

of cyclic carbonate in the non-aqueous electrolyte solution to

determine whether the cyclic carbonate is present in an amount of "30 to 50 volume percent of a
cyclic carbonate, based on a total volume of the non-aqueous solvent."

Advanced Electrolyte and UBE respond that in light of the specification, which provides
several illustrations, the plain language is all that is necessary for one ordinarily skified in the art to

be certain of the claim. Advanced Electrolyte and UBE assert that the '033 patent and file history

expressly exclude the additive solvents, such as the adiponitrile and the S=O group-containing

15

compound, from the calculation of the claimed volume of the non-aqueous solvent. Advanced
Electrolyte and UBE argue that Samsung erroneously relies on one sentence in the '033 patent, which

when considered in the context ofprimary and additive solvents, and weighed with the context of the
entire specification, in no way rises to clear-and-convincing evidence that the term is invalid.

Phillips

v. A

See

Wil Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) ("person of ordinary skill in the art is

deemed to read the claim term not only in the context of the particular claim in which the disputed

term appears, but in the context of the entire patent, including the specification.")
The '033 patent's Example A-i excludes adiponitrile from the volume measurements and the
S=O group-containing compound is excluded from the volume measurements in Example C-i. The
Summary ofthe Invention and Abstract exclude adiponitrile and the S=O group-containing compound

from the non-aqueous solvent. Additionally, the portion ofthe specification that lists various solvents
included for "[t]he non-aqueous solvent ofthe electrolytic solution ofthe invention" neither mentions
the nitrile or sultone additives nor discusses any of their appropriate relative volumes.
The '033 patent does not include adiponitrile or the S=O group-containing compound in

determining the total volume of the non-aqueous solvent. The phrase is readily understood by

ordinary persons skilled in the art and may be understood by invoking the phrase's plain and ordinary
meaning. The court concludes that Samsung has failed to show by clear-and-convincing evidence that

the phrase is indefinite.

16

C.

Summary table of agreed terms adopted by the court

The parties agreed to the following constructions either by their Joint Claim Construction

Statement or at the claims-construction hearing.

natural or artificial graphite

"graphite"
(Used in all three patents)

a compound that contains a ring of atoms

"cyclic" [compound]

(Used in all three patents)

plain and ordinary meaning, including
graphically as:

"vinylene carbonate"

(Used in '001 patent, Claims

1

&

9)

010
Vinylene carbonate is a cyclic carbonate
a substance dissolved in a solvent

"solute"
(Used in all three patents)

a liquid with components that are
uniformly dissolved in the liquid

"solution"
(Used in all three patents)

a substance that dissolves another

"solvent"

substance
(Used in all three patents)
"linear carbonate"

linear alkyl derivative of carbonic, which
retains a CO3 group

(Used in '809 patent, Claims 1, 2, 4, 10, 12,

19,20,23,&24)

17

linear or branched alkyl derivative of
carbonic acid, which retains a CO3 group

"chain carbonate"

(Used in "001 patent, Claims 1, 3, & 9)

D.

Summary table of court's construction

of disputed terms

Claim Term or P

Courts Construction

"main components"

Plain and ordinary meaning; not indefinite

(Used in '809 patent, Claim 1)
"0.1 to 4% by weight, based upon the total
weight of the non-aqueous solvent, of a

Plain and ordinary meaning; not indefinite

sultone derivative"
(Used in '809 patent, Claims

1

& 9)
Plain and ordinary meaning

"anode is composed of a material containing
graphite"
('809 patent, Claim 1)
"anode composed of a material containing
graphite"
('809 patent, Claim 9)

Plain and ordinary meaning; not indefinite

"both of said two organic compounds have a
reduction potential higher than reduction
potentials of the cyclic and chain carbonates"

('001 patent, Claims

1

& 9)
Plain and ordinary meaning

"30 to 50 volume percent of a cyclic
carbonate, based on a total volume of the nonaqueous solvent"

('033 patent, Claim 1)

18

IV.

Conclusion
For the above reasons, the court construes the disputed claims as noted and so ORDERS.

No other claim terms require construction.

IT IS FURTHER ORDERED that this cause is set for a Scheduling Conference on August
10, 2018, at 2:00 p.m., in Courtroom 7, Seventh Floor, United States Courthouse, 501 W. 5th Street,

Austin, Texas 78701. The parties shall meet and confer in advance of that date in an attempt to settle
this case.

If the case is not settled, the parties

shall confer in an attempt to reach agreement on a

schedule to follow for the remainder ofthis case. The court will render a Scheduling Order as a result

of the August

10, 2018 conference.

SIGNED this

dayofJune, 2018.

ITED STA

19

S DISTRICT JUDGE