Tuesday, March 14th

Workshop on Intellectual Property Issues in
Advanced Battery Technology

Summary of the program:

Argonne nanolabThis workshop is designed for attorneys, licensing officers, IP managers and technology scouts working with advanced battery and energy materials technologies. The advanced battery industry relies heavily on intellectual property rights. The core problem of battery technology–how to store more energy in less mass–has been the subject of substantial innovation since the introduction of the lithium-ion battery in 1991. Those innovations show no sign of slowing, and can be expected to accelerate. The ability of innovators to protect and monetize their discoveries through intellectual property rights is essential for moving innovations from the laboratory into commerce.

Intellectual property for advanced batteries and energy materials share some common characteristics and challenges. Intellectual property relating to lithium-ion technology has already spawned substantial litigation. The workshop will discuss the background of some of that litigation and explore ways that intellectual property owners can reduce their litigation costs. The workshop will also cover special issues to consider in licensing advanced battery and energy materials technology.

The U.S. government, through the Department of Energy and the national laboratory system, has invested billions of dollars in research and development for advanced batteries and energy materials. The federal government owns a large and valuable portfolio of battery-related intellectual property, much of it available for license by private industry. The workshop will discuss issues in licensing intellectual property from the federal government and will provide attendees with the opportunity to learn exactly what the federal government wants from battery technology licensees.

This workshop is the first workshop of its kind. Faculty includes IP professionals from some of the largest corporate holders of battery technology intellectual property as well as representatives from the U.S. Department of Energy Office of Technology Transfer, ARPA-E, several national laboratories, the U.S. Patent Office and the European Patent Office.

The workshop runs for one day, Tuesday, March 14, concurrently with the first half day of the NAATBatt 2017 program. Attendees may register for the workshop only or register for the entire NAATBatt 2017 program including the workshop.

CLE Credit

CLE credit may be available for attorneys attending the Workshop. For information about the availability of CLE credit, please contact Bobbi Case of Snell & Wilmer at (602) 382-6169.

8:30 – 9:30 a.m.
Establishing an IP culture across national boundaries that protects your innovations 

The IP protection culture at your company is of critical importance to long term success.  The smartest scientists and engineers in the world won’t come work at your company, or be encouraged to create IP for your company, if you do not have a culture and procedures that encourage both innovation and protection of the associated intellectual property.  Battery companies often have a multinational presence that makes designing and sustaining such a culture, globally, a challenge.  Hear how multi-national companies and other major holders of battery technology IP are addressing this challenge and creating a global IP culture. The panel will explore:

  • The cultural challenges inside a global company of protecting IP
  • In some cultures, patents are a matter of pride/honor, in other cultures they are tools for strategic advantage, or financial remuneration
  • How to incentivize inventors to formulate and submit invention disclosures, taking into account cultural differences
  • How to organize and implement patent review committees
  • Handling different types of invention disclosures: electrical, chemical, system applications, or materials
  • Implementing pre-filing landscape searches
  • IP filing strategies and ownership issues working with partners including perspectives on emerging technologies from the point of view of  integrators and suppliers
  • How to determine US, PCT, and national filing strategies
  • Protecting IP when innovating with third parties
  • Trade secret strategies in batteries


John Platt, Snell & Wilmer, moderator
Qi Zhuo, BASF
Andy Filler, 3LP Advisors
Anne Marie Meike, Lawrence Livermore National Laboratory
Bruce Dean, Withers & Rogers

9:30 – 10:30 a.m.
Patent prosecution in energy storage: prosecution strategies at the cross-roads of chemistry, materials, electronics, systems, and software.

Battery patent prosecution is unique because energy storage solutions are often as dependent on how they are operated, their environment, or the system they are used in, as they are on the chemistry or a particular anode design being implemented.  Thus, battery patent prosecution can involve the use of multiple strategies simultaneously.

This panel will discuss claim drafting, specification drafting, and prosecution strategies including divisional/continuation and CIP strategy.  In addition, battery manufacture and design is occurring in many places across the globe. Panelists will discuss the considerations to be taken when prosecuting patents globally, including PCT and EPO filing and claim drafting strategies. Finally, the panel will address  batteries in the software context, particularly battery management systems, and consider how to avoid Alice type rejections. In addition, this panel will explore how to think about filing battery patents in the context of the different needs of battery manufacturers’ customers and end-users with a particular focus on form factors, lifecycles, power output, and use case. i.e. mobile vs. stationary (car vs. utility), IOT, phones etc. How do you patent to cover all of those different customers? And when do you consider fast tracking your battery patent applications vs. slow walking them? (New P3 program, After Final 2.0, Accelerated Examination.) Battery manufacturers have a very diverse customer base.


John Platt, Snell & Wilmer, moderator
Vagn Nissen, European Patent Office
John Cabeca, U.S. Patent and Trademark Office
Stephen Perkins, Medtronic
Benjamin Park, Enevate Corporation

11:00 – 12:15 p.m.
Issues in licensing battery IP: What does the market demand and the government require?

This panel will discuss market terms for licensing battery technology IP from large and smaller owners and from agencies of the U.S. government. IP owners will discuss their licensing experience and their perception of prevailing commercial terms and best practices.

The panel will also discuss the special issues involved in licensing battery IP from the U.S. government, including important proposed changes in tech transfer practices at the U.S. Department of Energy. Over the past several years there has been a significant increase in government funding of battery research, and corporations are increasingly working with universities and the national labs on battery technology.  New DOE tech transfer rules are coming.  Learn from this panel how to work smoothly and efficiently in this new environment.


Dan Abraham, MPEG-LA, moderator
Rochelle Blaustein, U.S. Department of Energy
Robin Johnston, Lawrence Berkeley National Laboratory
James Jessop, Hydro-Quebec
Sue Babinec, ARPA-E
Benjamin Park, Enevate Corporation

12:15 -1:30 p.m.

Networking lunch, for workshop registrants only

1:30 – 2:30 p.m.
Patent pool and aggregators: models for avoiding litigation and monetizing innovation.

This panel will discuss the practice of patent pooling and the different options available to companies to aggregating patents. Patent pools can simplify the licensing process, avoid litigation, provide access to technology and limit freedom to operate risks. But there are many different forms of pooling. The panel will explore many of these options and discuss the strengths and weaknesses of different patent aggregation models.  The panel will address:

  • How do patent pools enhance market competition and avoid anti-trust issues?
  • What about defensive aggregators, what are the benefits of membership?
  • How would a battery IP pool work?
  • What is the ROI associated with a battery IP pool or joining a patent aggregator?
  • How do pools impact people in the ecosystem that aren’t in the pool?
  • How does the license on transfer network (LOT NET) differ from Unified patents and the open invention network?

Shawn Ambwani, Unified Patents, moderator
Dan Abraham, MPEG-LA
Keith Berglet, Open Invention Network
Ken Seddon, LotNet

2:30 – 3:30 p.m.
Battery patent litigation–when you have to do battle

In its relatively short history, intellectual property for advanced battery technology has been a lightning rod for patent litigation. Due to the fast moving pace of innovation, the myriad of patents filed, and the overlapping layers of patents that can apply to a single innovation (i.e., patents oriented to materials, markets, cells, batteries, and usage/lifecycle), navigating the thicket of patents without encountering claims of infringement can be difficult.  A panel of veterans from the patent litigation trenches will discuss best strategies for defending against litigation, or asserting your IP rights.  Areas of discussion will include:

  • The International Trade Commission (ITC) is a fast track version of a federal patent lawsuit, with the ability to prohibit importation of infringing product.  Given that energy storage manufacturing occurs globally, this venue has been active in the battery space.
  • IPR’s, Post Grant Review – these tools have saved many defendants over the last four years, by having the USPTO re-evaluate whether the patent should have been granted in the first place.
  • Freedom to operate and validity opinions
  • Defending against NPE’s


Chuck Hauff, Snell & Wilmer, moderator
David Rogers, Snell & Wilmer
Andrew Flior, Snell & Wilmer
John-Paul Rooney, Withers & Rogers

3:30 – 4:15 p.m.
Networking Break


Workshop registrants are invited to attend the official opening of the NAATBatt Innovation Showcase Exhibit Hall in the Mohave Ballroom.  Drinks and refreshments will be served.

4:15 – 5:30 p.m.
Big data in advanced battery IP: making informed, data-driven decisions for battery R&D and IP strategies  

Big data is an innovative new tool in IP strategy. If you are not familiar with how to use it, you need to be. Does your company use big data to track your competitor’s innovation, to find blank areas in which to innovate, to avoid infringing other’s patents, to develop filing strategies, to handicap the prosecution of your patent applications, to observe battery litigation trends, or to evaluate the value of your patent portfolio in the context of the competitive patent landscape?

A panel of big data analysts will present interesting statistics and trends related to different aspects of battery IP (the advanced battery patent landscape, law firm efficiency (PAIR statistics), and litigation trends) and provide real world examples of how companies are putting big data to work for them.


Michael Wilczek, Bloomberg BNA, moderator
Matt Rappaport
, IP Checkups
Rod Wittenberg, Reed Tech
Tony Kulesa, h2IP LLC

6:00 – 9:00 p.m.
NAATBatt 2017 Opening Reception and Dinner

Workshop registrants are welcome to join the attendees of the general NAATBatt 2017 meeting for the Opening Reception and Opening Dinner of NAATBatt 2017 at the Wigwam resort. Workshop attendees are encouraged to meet and network with executives of some of the most important companies in the advanced battery industry.