On March 21, 2023, Ningbo Rongbai New Energy Technology Co., Ltd. (hereinafter referred to as “Rongbai Technology”), a listed company on the Science and Technology Innovation Board SH) has issued a patent lawsuit progress announcement against Umicore.
In March 2023, Umicore took the initiative to submit an application to the Ningbo Intermediate People’s Court, requesting the court to allow it to withdraw the patent lawsuit against Rongbai Technology, and the Ningbo Intermediate People’s Court issued a civil ruling. Rongbai Technology indicated that it had recently received the civil ruling (Case No. [2021] Zhe02 ZhiMinChuNo. 328), which showed that the Court allowed Umicore to withdraw the lawsuit and request it to bear the case acceptance fee..
The announcement shows that in June 2021, Umicore sued Rongbai Technology and Hubei Rongbai for infringing the patent right of invention, claiming that the technical features of Rongbai Technology and Hubei Rongbai’s S85E products are similar to its patent of invention with the application number ZL201580030857.0.
The patent relates to “a cathode material with excellent hardness and strength”, and Umicore requested the court to award Rongbai Technology compensation for its economic losses of 106.5 million yuan, while paying a temporary protection period fee of 145.9 million yuan for the invention patent, as well as reasonable expenses of 96000 yuan to prevent infringement, totaling about 252.4 million yuan.
This case involves the ternary material lithium nickel cobalt manganate NCM811 series products, which is also the main products of Rongbai, Once this series of products is judged to infringe the invention patent rights of Umicore,. Rongbai Technology may pay a huge amount of compensation.
Before that, Umicore has filed a patent lawsuit against Rongbai Technology, involving NCM622 series product S6503, with a claim of 60 million yuan.
Rongbai Technology did not perform well in making the invalidation requests against the patents involved in these two lawsuits. The main claims of Umicore’s patents were in a valid state after being heard by the State Intellectual Property Office.
However, in September 2021, the Ningbo Intermediate Court ruled the patent infringement relates to NCM622 series products and found that Rongbai Technology did not infringe invention patent rights of Umicore. According to the announcement of Rongbai Technology, the court accepted the Appraisal Opinion issued by Zhejiang Intellectual Property Service Center, which concluded that the S6503 product did not have the technical features contained in the plaintiff’s patent-in-suit claims.
The decision of Umicore to withdraw the lawsuit in the trial involving NCM811 series products should also be related to the fact that the court will accept the infringement appraisal results issued by third-party appraisal institutions during the trial.
According to the announcement, Ningbo Central Court entrusted Beijing Guochuang Dingcheng Intellectual Property Application Technology Research Institute to to conduct infringement appraisal, and the appraisal results showed that:
The x-value and BET specific surface area value of Rongbai’s S85E product are not similar to the technical features of Umicore’s invention patent No. 201580030857.0, and the relevant parameters of the product do not fall into the scope of protection of the invention patent No. 201580030857.0.
Therefore, on February 3, 2023, the appraisal institution issued an appraisal opinion (Guochuang appraisal [2022] Zhi Jian Zi No. 432), which showed that the S85E product of Rongbai Technology did not infringe the inventinon patent of Umicore.
It can be seen that the two “escapes” of Rongbai Technology in China depended on the results of the appraisal institution’s infringement appraisal, but the validity of Umicore’s patent in China was not challenged.
However, on December 27 last year, Rongbai Technology issued an announcement showing that this NCM811 Chinese patent ZL201580030857.0 Korean homologation patent KR101821530B1, which has been reviewed by the Korean Patent Office, has been declared invalid. This may also be one of the key factors for the turnaround of this case.
Therefore, although Umicore has withdrawn the lawsuit voluntarily, it is not yet known whether Umicore will make a comeback in the future and file a lawsuit against Rongbai Technology with a new patent.
However, after filing a patent lawsuit against Rongbai Technology, Umicore also filed a patent lawsuit against another magnate in cathode materials, Dangsheng Technology, in August last year, and claimed 110 million yuan. In this lawsuit, the patents used are different from those of Rongbai Technology.
We don’t know if it’s because Umicore’s attempt to push forward its patent licensing plan in China didn’t go well, but recently, LG Chem publicly stated that it wants to push forward its patent licensing plan for cathode materials and explicitly proposed to license its high nickel cathode material patents to Chinese cathode material suppliers.
It is worth paying attention to whether Umicore’s active withdrawal means that foreign cathode material manufacturers have really given up licensing the Chinese market, or are brewing a larger-scale “counterattack” again.
