Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Celgard, LLC v. LG Chem America, Inc.

United States District Court, W.D. North Carolina, Charlotte Division

February 18, 2015

CELGARD, LLC, Plaintiff,
v.
LG CHEM AMERICA, INC., and LG CHEM, LTD., Defendants.

ORDER

DAVID C. KEESLER, Magistrate Judge.

THIS MATTER IS BEFORE THE COURT on "LG Chem's Alternative Motion To Transfer Venue To The Eastern District Of Michigan In Whole Or In Part" (Document No. 230). This motion has been referred to the undersigned Magistrate Judge pursuant to 28 U.S.C. § 636(b), and is ripe for disposition. Having carefully considered the motion, the record, and applicable authority, the undersigned will grant the motion to transfer venue.

BACKGROUND

Celgard, LLC ("Plaintiff" or "Celgard") initiated this action with the filing of a "Complaint For Patent Infringement" (Document No. 1) on January 30, 2014. The original Complaint asserts claims against LG Chem, Ltd. ("LG Chem") and LG Chem America, Inc. ("LGCAI') (together "Defendants") for: (1) direct infringement of U.S. Patent No. 6, 432, 586; and (2) induced infringement of U.S. Patent No. 6, 432, 586. (Document No. 1, pp.10-12).

The underlying U.S. Patent No. 6, 432, 586 (the "'586 patent"), as previously discussed by this Court,

relates to "separators" used in the construction of high energy rechargeable lithium-ion batteries. Compl. ¶ 7, ECF No. 1; 586 Patent Abstract 1, ECF No. 1-A. These separators are designed to address "dendrite growth" in lithium batteries, a common problem associated with the high energy anodes used in such high energy batteries. Abstract 1:20-22. Dendrite growth penetrates the separator, creating direct contact between the anode and cathode within each cell of the battery, thereby causing "electronic" shorting of the battery. Abstract 1:22-31. A minimal amount of shorting may only reduce the efficiency of the battery; however, electronic shorting can also cause a phenomenon known as "thermal runaway" of the battery, a serious safety problem for rechargeable lithium batteries. Id. at 1:33-35. According to the Patent Abstract, the dendrite growth limits the commercial application of lithium-ion batteries. Id. at 1:36-39.
The instant invention contemplates a separator designed to address these problems. Id. at 1:45-51. A ceramic composite layer is designed to block dendrite growth and prevent direct contact between the anode and cathode, and a polymeric micro-porous layer is designed to address "thermal runaway" in the event of contact between the anode and cathode. Id. at 2:52-60. A battery with such a separator is less likely to fail, catch fire, or experience a short, and is more likely to last longer. Pl. Mem. in Supp. Prel. Inj. 4, ECF No. 16. Celgard filed a patent application for the invention on April 10, 2000, and the Patent Office issued the patent on April 13, 2002.

(Document No. 128, pp.1-2).

The original Complaint generally alleges that LG Chem obtains uncoated polymeric base films from third parties and makes its own uncoated polymeric base films to which it applies a ceramic coating layer to create battery separators that fall within the scope of the 586 Patent. (Document No. 1, ¶¶ 10-12). The separators are then sold by LG Chem and/or LGCAI to third parties, or used in Defendants' own production of lithium-ion batteries, all allegedly in violation of the 586 Patent. (Document No. 1, ¶ 13). Plaintiff alleges that Defendants have knowingly infringed the 586 Patent and "know that their batteries containing the infringing separators are used by Defendants' customers to make notebook or laptop PCs, battery packs, tablets, electric vehicles, and/or other products sold in the United States and North Carolina." (Document No. 1, ¶ 19).

On March 5, 2014, Plaintiff's "Motion For Preliminary Injunction" (Document No. 15) was filed. Then on March 19, 2014, "The LG Chem Defendants' Motion To Dismiss Plaintiff's Complaint For Lack Of Personal Jurisdiction" (Document No. 30) was filed. "Plaintiff Celgard, LLC's Alternative Motion For Jurisdictional Discovery" (Document No. 58) was filed on April 7, 2014. "The LG Chem Defendants' Alternative Motion To Transfer Venue To The Eastern District Of Michigan" (Document No. 71) was filed on April 23, 2014.

On May 14, 2014, the Honorable Max O. Cogburn, Jr. held a Motion Hearing on the aforementioned motions. During the hearing the Court primarily considered arguments on the issues of preliminary injunction and personal jurisdiction. See (Document No. 111). Judge Cogburn issued an "Order" (Document No. 128) on July 18, 2014, granting Plaintiff's "Motion For Preliminary Injunction" (Document No. 15) and "Plaintiff Celgard, LLC's Alternative Motion For Jurisdictional Discovery" (Document No. 58), and directing that "The LG Chem Defendants' Motion To Dismiss Plaintiff's Complaint For Lack Of Personal Jurisdiction" (Document No. 30) and "The LG Chem Defendants' Alternative Motion To Transfer Venue To The Eastern District Of Michigan" (Document No. 71) be referred to the undersigned Magistrate Judge "for consideration after jurisdictional discovery." (Document No. 128).

The undersigned issued an "Order" (Document No. 139) on July 21, 2014, setting limits and deadlines for jurisdictional discovery. On August 26, 2014, the undersigned issued an "Order And Memorandum And Recommendation" (Document No. 204) allowing Plaintiff to file an Amended Complaint incorporating the results of jurisdictional discovery, and recommending that the pending motions to dismiss and transfer (Document Nos. 30 and 71) be denied as moot.

Plaintiff's "First Amended Complaint" (Document No. 217) was filed on September 5, 2014. The Amended Complaint re-asserts claims for direct infringement and induced infringement of the 586 Patent by both Defendants, and adds claims against LG Chem for: unfair and deceptive trade practices; breach of contract; breach of the implied covenant of good faith and fair dealing; and, in the alternative, unjust enrichment. (Document No. 217, pp.25-35).

The new claims against LG Chem relate to Plaintiff's relationship with LG Chem as a supplier of "separator base film for all lithium-ion batteries manufactured by LG Chem for the electric vehicle industry." (Document No. 217, pp.1-2). Plaintiff alleges that "Defendants walked away from their prior commitments and chose to purchase, coat and sell infringing ceramic coated separator with base film from other suppliers, despite their knowledge that these actions infringed on Celgard's exclusive patent rights." (Document No. 217, p.2). Plaintiff's additional counts specifically contend that LG Chem is liable for its "repeated false promises to use Celgard as its exclusive and/or primary long-term supplier of base film for the electric vehicle industry." (Document No. 217, p.29).

"The LG Chem Defendants' Motion To Dismiss Counts III, IV, V, VI, Celgard's First Amended Complaint..." (Document No. 222); "LG Chem's Motion To Dismiss Plaintiff's First Amended Complaint For Lack Of Personal Jurisdiction" (Document No. 226); and "LG Chem's Alternative Motion To Transfer Venue To The Eastern District Of Michigan In Whole Or In Part" (Document No. 230) were filed on September 29, 2014. The pending motions have been fully briefed and are now ripe for review and disposition.

STANDARD OF REVIEW

The applicable statute here is 28 U.S.C. § 1404, which provides that:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.