Molecular Rebar Design, LLC (as patent owner) and its subsidiary Black Diamond Structures, LLC (as exclusive licensee) have sued LG Energy Solution ( 2:24-cv-00107) and Samsung (2:24-cv-00108) in separate Eastern District of Texas complaints. Asserted in each complaint are five patents generally related to lithium-ion batteries based on "discrete carbon nanotubes ('CNTs')", which are, per the plaintiff, "substantially disentangled, unlike typical CNTs, which are clumped and clustered". The accused products include certain batteries (e.g., "the LG HG2 battery, HG6 battery, and MJ1 battery") and Samsung smartphones (e.g., "the Samsung Galaxy S9, Samsung Galaxy S10+, Samsung Galaxy S21 Ultra, and Samsung Galaxy S22 Ultra").
The patents now in suit (8,808,909; 8,968,924; 10,153,483; 9,636,649; 10,608,282) belong to a 19-member family with issue dates ranging from July 2013 through March 2021. The family has an earliest estimated priority date in December 2009, based on the filing of a provision application; prosecution of multiple related applications continues before the USPTO. As noted, Molecular Rebar pleads that it owns the patents and that its subsidiary Black Diamond is the patents' exclusive licensee. The patents name Clive P. Bosnyak and Kurt Swogger as inventors.
Bosnyak and Swogger are identified on Molecular Rebar's public website as the company's CTO and CEO, respectively. They apparently founded the company together, which Delaware records date in September 2012. Within a month, the entity registered to conduct business in Texas, where it has identified over the years a shifting—generally growing—list of members in the LLC. Molecular Rebar is based in Austin, Texas; it characterizes itself as "established to develop and commercialize a breakthrough form of modified carbon nanotubes (CNT's), called MOLECULAR REBAR. These are the world's first CNT's that are disentangled from the usual clumping and individualized through a patent-protected process which enables significantly enhanced performance for a myriad of high-value materials".
Black Diamond Structures was formed in Delaware in November 2014. State filings suggest that Molecular Rebar has secured financing over the years through multiple vehicles, including, most recently in September 2023. The secured party for that funding is not identified. Black Diamond is listed as a debtor after 2021.
In August 2022, the plaintiff pair filed suit against LG Energy Solution, together with LG Electronics (LGE), as well as LG Chem and LG Energy Solution Michigan, asserting the '649 and '282 patents, along with a third from the same family (8,475,961). There, the plaintiffs plead that Molecular Rebar, "along with its affiliated predecessors going back to in or around 2009, recognized that there was a significant gap between the theoretical performance of carbon nanotubes (CNTs) and their commercial viability because of their poor dispersibility. MRD has bridged that gap with unique capabilities to provide discrete, and optionally surface tailored carbon nanotubes". That complaint targeted the same accused products; it was eventually assigned to District Judge Gregory B. Williams but voluntarily dismissed without prejudice by November 2022.
In its current complaint against LG Energy Solution, Molecular Rebar pleads that "[p]rior to December 2020, LG Energy Solution was part of—in particular, was the battery division of—LG Chem, Ltd., another South Korean entity. LG Energy Solution was spun off as a separate entity in December 2020". The plaintiffs plead willfulness, relying on the current complaint for three of the patents-in-suit, but as to the '649 and '282 patents, they point back to the earlier, brief lawsuit.
Susman Godfrey LLP filed the complaints for the plaintiffs; both cases have been assigned to Chief Judge Rodney Gilstrap. 2/16, Eastern District of Texas.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
