Düsseldorf Regional Court has found in favour of carmaker Opel and Chinese lithium-ion battery manufacturer CATL, with the judges ruling that the two companies do not infringe an MU Ionic patent covering e-batteries for cars. The lawsuit is being viewed as a test case for potential future disputes with other car makers, which use CATL batteries in their electric cars.
13 February 2023 by Mathieu Klos
CATL and German car manufacturer Opel do not infringe MU Ionic’s EP 19 39 971 in Germany. At the end of January, Düsseldorf Regional Court rejected a claim of patent infringement brought by the patent holder (case ID: 4c O 53/21), which is a joint venture of Mitsubishi Chemicals and Ube Industries that produces electrolytes for lithium-ion batteries.
Japanese company MU Ionic had demanded injunctive relief, information and the rendering of accounts, as well as the destruction of existing products. It believes that it is particularly the chemical composition of electrodes in Chinese lithium-ion battery manufacturer CATL’s batteries which infringe the patent.
EP 971 protects a lithium secondary cell and nonaqueous electrolytic solution for use therein. However, the judges concluded that the technology in CATL’s batteries uses additional substances which the patent does not cover. MU Ionic may appeal the decision, which experts consider likely given the technology’s commercial potential.
In parallel, CATL and Opel have each filed a nullity action against EP 971 at the Federal Patent Court.
Opel installs the CATL batteries in the Corsa-e, Zafira-e and Vivaro-e models, according to media reports. Opel is a much smaller carmaker in Europe compared to VW or Daimler. Therefore, stakeholders see the lawsuit against Opel as a test case for possible lawsuits against other car makers. BMW and Daimler, for example, also use the Chinese manufacturer’s batteries.
Although Germany has a strong automotive industry, lawsuits involving e-battery technology are currently quite uncommon. As such, the law firms involved in the Düsseldorf Regional Court proceedings were, for the most part, appearing for their clients for the first time.
MU Ionic, for example, instructed Meissner Bolte on litigation for the first time. The firm’s patent attorneys have filed patents for the Japanese joint venture in the past, but IP boutique Vossius & Partner filed the patent-in-suit.
According to the EPO register, the company also relies on Hoffmann Eitle for applications.
Patent litigator Tobias Wuttke was working for Meissner Bolte at the time the suit was filed. At the beginning of the year, however, he moved to competitor Bardehle Pagenberg, taking the litigation with him. Meissner Bolte’s patent attorneys continue to conduct nullity proceedings for the client.
According to JUVE Patent information, CATL’s litigators are also acting for the company for the first time. According to the EPO register, several German and UK law firms file applications for the company, although Cohausz & Florack is not one of them. However, the firm’s patent attorneys are apparently conducting the nullity proceedings, as well as providing support regarding the technical aspects of the infringement proceedings.
JUVE Patent is not aware of the reasons why CATL retained the Düsseldorf patent attorney firm for this case, or why the company chose two experienced litigators, Herbert Smith Freehills partner Ina vom Feld and Rospatt Osten Pross partner Max von Rospatt, to defend the action.
On the other hand, Kather Augenstein and Opel have a long-standing relationship. While name partner Peter Kather has retained deep ties to the German auto industry for many years, partner Christopher Weber mainly led proceedings for Opel.
The firm called in Cologne-based patent attorney firm Dompatent, which has a strong market reputation for chemical patents.
For MU Ionic
Bardehle Pagenberg (Munich): Tobias Wuttke (partner)
Meissner Bolte (Munich) Christoph Behrens, Tobias Popp (both patent attorneys); Nobuchika Mamine
Herbert Smith Freehills (Düsseldorf): Ina vom Feld (partner, public knowledge)
Rospatt Osten Pross (Düsseldorf): Max von Rospatt (partner, public knowledge)
Cohausz & Florack (Düsseldorf): Natalie Kirchhofer, Arwed Burrichter (both partners and patent attorneys) (public knowledge)
Kather Augenstein (Düsseldorf): Christopher Weber (lead), Peter Kather (both partners)
Dompatent (Cologne): Hans-Peter Jönsson (partner and patent attorney)
Regional Court Düsseldorf, 4c Civil Chamber
Sabine Klepsch (presiding judge)