Administrative Law Judge (ALJ) of the US International Trade Commission (ITC) Dee Lord issued her Initial Determination on Wednesday, March 31, 2021 (U.S. time) finding no violation of Section 337 of the Tariff Act by SKI’s lithium-ion battery technology. LG Energy Solution (LGES, LG Chem at the time of filing), initiated this Investigation against SK Innovation (SKI), alleging infringement of four of LGES’ U.S. patents, at the ITC in September 2019 (U.S. ITC Inv. No. 337-1181).
SKI welcomed this decision by the ITC and stated that, “We spent years developing SKI’s lithium-ion battery technology and fully expected the ITC to confirm that SKI’s accused technology was not violating the patent rights asserted by LGES in the U.S.” Wednesday’s decision recognizes SKI’s unique and innovative technology.
This is not the first time that SKI has had to fend off allegations by LG that SKI’s separator technology infringes LGES’ patents. In 2011, before the Korean court, LG Chem asserted that SKI infringed the Korean counterpart (KR 775,310) of one of the patents being asserted in the U.S. (US 7,662,517). That dispute lasted several years in Korea, where the Korean patent claims, as asserted, were found to be both invalid and not infringed by SKI’s separator technology. At the time, SKI noted that LG Chem was overreaching in an effort to hold back competitors in Korea. The present dispute reflects similar overreach in the U.S. Like the prior dispute in Korea, Wednesday’s ID demonstrates that SKI’s separators do not infringe LGES’ separator-related patents.
In addition to finding that the asserted claims of the ’517 patent are not infringed and the domestic industry requirement was not satisfied with respect to the ’517 patent, the Initial Determination also determined that:
(1) The asserted claims of U.S. Patent No. 7,638,241 are not infringed and claims 1, 2, 3, 24, and 25 of the ’241 patent are invalid;
(2) The asserted claims of U.S. Patent No. 7,709,152 are invalid; and
(3) Asserted claims 5 and 26 of U.S. Patent No. 7,771,877 are invalid and the domestic industry requirement was not satisfied.
As a result, the separators and cathode active materials that will be used in SKI’s new plant in Georgia are not to be excluded from importation by any exclusion order issuing from this Investigation. Additionally, SKI believes that Wednesday’s Initial Determination further demonstrates the unique technological advancements of SKI’s lithium-ion battery technology.
ALJ Lord’s Wednesday decision remains subject to review by the full Commission and a Final Determination is expected from the Commission on August 2, 2021 (U.S. time). SKI is pleased with Wednesday’s outcome and looks forward to defending the decision before the full Commission should LGES seek review of the Initial Determination.