Milwaukee Electric Tool Corporation et al v. Snap-On Incorporated

Filing 232

ORDER signed by Judge J.P. Stadtmueller on 9/22/2017. 177 Plaintiffs' Motion to File Claim Construction Brief GRANTED. Plaintiffs' proposed construction of disputed claim terms ADOPTED. 183 Defendant's Motion for Summary Judgme nt DENIED. 185 Plaintiffs' Motion for Summary Judgment GRANTED in part and DENIED in part: DENIED as to assignor estoppel; GRANTED in part as to IPR estoppel; and GRANTED as to Defendant's anticipation, invalidity, and inequitable cond uct defenses. 220 Plaintiffs' Motion for Leave to Amend Answer DENIED. 176 , 180 , 181 , 198 , 204 , 211 , 215 , 219 , 222 and 229 Parties' Motions to Restrict Certain Documents GRANTED. See Order for further details. (cc: all counsel) (jm)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
MILWAUKEE ELECTRIC TOOL
CORPORATION, METCO BATTERY
TECHNOLOGIES LLC, AC (MACAO
COMMERCIAL OFFSHORE) LIMITED,
and TECHTRONIC INDUSTRIES CO.
LTD.,

Case No. 14-CV-1296-JPS

Plaintiffs,
v.
SNAP-ON INCORPORATED,

ORDER

Defendant.

This is a patent case about lithium-ion batteries used in power tools.
Before the Court are the parties’ claim construction briefs and their crossmotions for summary judgment. For the reasons stated below, the Court
adopts Plaintiffs’ proposed claim construction in all respects. The Court
further finds that Snap-On has not proffered sufficient undisputed facts to
warrant summary judgment on the grounds of derivation or pre-suit
damages. Likewise, Plaintiffs have not shown that the undisputed facts
support application of assignor estoppel against Snap-On, although IPR
estoppel does operate to bar some uses of some of Snap-On’s prior art
references. Finally, the Court determines that there is an insufficient factual
basis for Snap-On’s claim of invalidity, its inequitable conduct defense, and
certain aspects of its anticipation defense, and so these will not be permitted
to proceed to trial.

1.

BACKGROUND
Plaintiffs assert infringement of the following claims against Snap-

on: claims 1 and 8–10 of U.S. Patent No. 7,554,290 (the “‘290 Patent”), claims
1, 4, 5, 7–13, and 16–19 of U.S. Patent No. 7,999,510 (the “‘510 Patent”), and
claims 1, 8–10, 12, and 13 of U.S. Patent No. 7,944,173 (the “‘173 Patent”).
Independent claim 1 of the ‘290 Patent, which is representative of its
counterparts, recites
a battery pack for power a hand held power tool, the battery
pack comprising:
a housing connectable to and supportable by the hand
held power tool; and
a plurality of battery cells supported by the housing,
the battery cells being capable of producing an average
discharge current greater than or equal to approximately 20
amps, the battery cells having a lithium-based chemistry.
(Docket #187-1 at 77). Further, later claims provide, in relevant part, that the
pack’s battery cells each have “a nominal voltage of 4.2 volts” and that they
have “a capacity of approximately 3.0 ampere-hours [(“Ah”)].” Id.
Because of the vast factual record presented, the Court will provide
here a broad overview of the relevant background and timeline. Facts
pertinent only to one narrow argument or another will be discussed at the
appropriate juncture. This may lead to some repetition, but the Court has
found no better way to fully and fairly treat each matter for decision.1

The Court pauses here to note that the parties often treated their factual
briefing as a sandbox for gratuitous sniping at each other. Even when the core,
material fact at issue could not be disputed, they rarely overlooked a chance to
disagree over minutiae. Additionally, in stating the facts, they often included their
own interpretive gloss on the document or testimony in question, which invited
1

Page 2 of 80

Power-tool companies, including Plaintiff Milwaukee Electric Tool
Corporation (“Milwaukee”), began manufacturing high-power cordless
tools in the 1980s, and those power tools were traditionally powered by
nickel-cadmium (“NiCd”) or nickel-metal hydride (“NiMH”) battery cells
contained in battery packs. In the 1980s and 1990s, lithium-based battery
technology emerged, and was initially used in low-power applications such
as cell phones and laptop computers, later migrating to high-power
applications such as electric automobiles and satellites.
Canadian battery manufacturer E-One Moli Energy (Canada) Ltd.
(“Moli”) was “a world leading manufacturer and researcher of lithium-ion
(“Li-ion”) batteries,” and had a “large and accomplished world class team”
that took on “pioneering roles in the advancement of lithium-ion
technology.” (Docket #187-26 at 8–9). Like other battery makers, Moli
initially focused on low-power applications, but by the early 2000s it was
focused on high-power uses, including power tools, for which it developed
battery cells.
In June 2001, Mark Reid (“Reid”), a Moli employee, prepared a
presentation for toolmaker Bosch called the “Bosch 24V Power Tools
Presentation.” In the presentation, Reid showcased Moli’s Li-ion battery

further unnecessary disputes as to what a document actually said or what a
witness’ testimony actually was.
This behavior made the work of the Court more onerous, as it forced the
Court to carefully comb the record for the true facts, including the parties’
competing statements of fact, which totaled hundreds of pages, and the thousands
of pages of exhibits attached thereto. The Court will not expend its limited
resources resolving every minor evidentiary dispute the parties attempted to raise.
Material disputes will be discussed; anything less will not. The Court expects that
the parties’ pretrial submissions will be formulated in a more cooperative fashion
with a focus on the clear, cogent presentation of the issues to be decided at trial.

Page 3 of 80

packs. Two videos embedded in the presentation show a Moli employee
using a Bosch reciprocating saw retrofitted with Moli Li-ion cells cutting
steel pipe and wood. The presentation goes on to describe the benefits of
replacing NiCd battery cells with Li-ion ones, including increased power,
reduced weight, and longer shelf life. The presentation also depicted
common NiCd battery pack features, including a housing, connectability of
the pack to the tool, and a locking assembly.
On July 25, 2001, a sales representative of Moli wrote to Milwaukee,
attaching a modified version of the Bosch presentation, as well as a “Power
2000” presentation created by Moli scientist Ulrich von Sacken (“von
Sacken”), which described Moli’s Li-ion cells and promoted their ability to
provide cost-effective power for high-power applications. Moli’s sales
representative also visited the company in July 2001 to introduce
Milwaukee to the Moli cells.
A month later, on August 27, 2001, Milwaukee product manager
David Selby (“Selby”) met with a Moli representative. In an email to his
colleagues the next day, he said that during the meeting he heard
“disturbing news.” (Docket #187-33 at 2). Moli had apparently reported to
him that it was working with other power tool manufacturers to develop
Li-ion battery packs. Id. He said that Milwaukee nevertheless wanted to
evaluate sample packs, and he set up a second meeting for September 18,
2001.
Moli provided two sample battery packs on September 24, 2001. Jan
Reimers (“Reimers”), a Moli scientist, stated that the packs’ designated
discharge currents, such as “20A”—meaning “20 amps”—denoted “the
maximum current that the cell can be discharged at and still return >70% of

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the rated capacity.” (Docket #187-3 at 2). The battery packs sent in
September 2001 were designated 15A.
At this point, it is helpful to foreshadow one of the forthcoming claim
construction disputes. As noted above, independent claim 1 of the ’290
Patent and independent claims 1, 9, 10, 12, 16, and 18 of the ’510 Patent
recite “the battery cells being capable of producing an average discharge
current greater than or equal to approximately 20 amps.” This is known as
the “20 Amp Limitation.”2 Much of the parties’ disagreement regarding
construction of the 20 Amp Limitation revolves around how to test it—in
particular, how to measure the “average discharge current” of a battery
pack. The facts regarding cell testing and development, discussed further
below, will feature prominently in resolving that and other disputes.
As noted above, Moli created two prototype packs, each comprised
of a housing and a plurality of five Li-ion 15A cells connected in series. One
of the named inventors of the patents-in-suit, Gary Meyer (“Meyer”), a
Milwaukee employee, tested the prototype packs during the period of
September 26 through October 11, 2001. First, he used a constant-current
discharge test, in which the pack was configured to discharge at a constant
current of 20 amps to see if it could provide this current over its entire
capacity without failing. Moli’s prototype packs failed this test, as they were
able to deliver 20 amps only for a short time, delivering just a fraction of
their entire rated capacity of 3.0 Ah before experiencing voltage crash,
ending the test. (Docket #201 ¶ 41).

Independent claim 1 of the ’173 Patent recites “the battery cells being
capable of producing an average battery pack discharge current greater than or
equal to approximately 20 amps.” The wording of this claim is slightly different
than the other patents-in-suit, but the parties agree that the difference is not
material.
2

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Meyer also performed a cutting test, in which he attached a
prototype pack to a circular saw and made cuts through wood. The
prototype pack was observed to produce an average discharge current of
26.19 amps. However, the results showed that the actual performance of the
pack ranged from over 50 amps to near zero during the course of the test.
The pack was able to power the circular saw to make 34–37 cuts.
Nevertheless, Meyer saw the test as a failure and concluded that the
prototype pack was “unsuitable for use with a power tool requiring high
discharge currents” because “the temperature of the Pack rapidly increased
above acceptable levels” and the voltage of the pack fell below acceptable
levels during the cuts. (Docket #187-17 at 74–75). Indeed, as Meyer saw it,
the test essentially destroyed the pack. (Docket #201 ¶¶ 36–37).
In addition, Meyer performed a pulsed current discharge test.
During that test, the prototypes were able to deliver at least one period of
constant-current discharge of 20 amps of a little over three minutes. The
packs were still not able to deliver that current for their entire rated
capacity.
As it will be important later in considering Snap-On’s inequitable
conduct defense, it should be noted here that in 2009, during the
prosecution of the ‘290 Patent, Plaintiffs disclosed the test results of this
initial testing of the prototype packs. The results were submitted as an
attachment to a declaration Meyer submitted to the United States Patent
and Trademark Office (“PTO”). The PTO considered these results before
granting the patent. In fact, the examiner first mistakenly believed the test
results from the prototype packs were results of Plaintiffs’ testing of the
claimed packs and rejected the application on the basis that the results
showed an inoperative and unsafe invention. When Plaintiffs informed the
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examiner that the prototype packs were not theirs but were the early Moli
prototypes, the examiner reversed his decision and granted the ‘290 Patent.
On October 16, 2001, Moli sent several more presentations to
Milwaukee promoting the advantages of their Li-ion batteries over existing
chemistries. Next, Meyer performed another cutting test on the prototype
packs on October 17, 2001. During this test, Meyer made concurrent cuts
into a board without shutting the saw off between cuts. The pack was able
to make a little more than half the total number of cuts before it overheated
and stopped. He allowed the pack to cool and finish making his cuts. In
total, the pack powered 70 cuts.
Again, as will be later relevant, Meyer did not mention this test in
his 2009 declaration to the PTO. Plaintiffs explain that the test was not
disclosed because there were no formal test results compiled from it.
Moreover, Plaintiffs contend that this test, like the first cutting test, was a
failure because it destroyed the pack in the process. However, Meyer did
report this test to Moli employee Blair Tweten (“Tweten”), in response to
Tweten’s email trying to set up an additional meeting. Tweten explained
that Moli could offer “insite [sic] into cell chemistry and potential changes
[they] may be able to offer.” (Docket #187-18 at 3). Meyer responded in an
excited tone that he was able to use the prototype pack to make 70 cuts with
a circular saw, although he was forced to give it a break in the middle
because it overheated.
That same day, Meyer informed Selby, among others, that he had
done some “quick tests” on the Moli cells and found that they “did much
better than their published specification sheet [and] ran some of our tools
OK.” (Docket #209-54 at 2). While he expressed that there were “[s]till issues

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of cycle life, safety, etc.,” he concluded that the cells were promising enough
that it was “definitely worth doing some further investigation.” Id.
On October 23, 2001, Milwaukee employees traveled to Canada to
tour Moli’s facility and to discuss working together. Milwaukee’s
presentation during the meeting appears to describe the various packs it
produced, as well as those of competitors. See (Docket #187-37). On October
29, 2001, Selby sent an email to Meyer and Jeffrey Zeiler (“Zeiler”), another
of the named inventors, attaching a forecast of sales of Li-ion battery packs.
(Only the email, and not the forecast, appears to have been provided in the
record.) On October 30, 2001, Zeiler emailed Tweten indicating that
Milwaukee was sending Moli two driver-drill kits to give Moli “the
opportunity to play with them and get a feel for the power required to run
them.” (Docket #187-39 at 2).
On November 1, 2001, von Sacken sent an email to Meyer and Zeiler
in which he suggested that Moli provide higher power cells in the form of
packs with three parallel high power 18650 cells, with a total capacity of 3
Ah, in place of the 15A-26650 cells, since, in von Sacken’s opinion,
Milwaukee seemed to want to use the cells in the circular saw “and other
power hungry applications.” (Docket #209-22 at 2). Moli provided a pack of
18650 cells to Milwaukee on December 17, 2001, in which five cells were
placed in series with three strings in parallel.
On November 26, 2001, Reimers sent an email to Meyer and Zeiler
enclosing a report that detailed certain trade-offs between cells optimized
for high energy (the 15A cells included in the prototype packs) and those
optimized for high power (25A and higher cells), including “1) some typical
spinel cycle life data, 2) more information on the capacity/cycle-life trades

Page 8 of 80

offs [sic], and 3) some low voltage recovery data.” (Docket #187-40).3 In this
report, Reimers discusses various Li-ion cells that could be made for
Milwaukee battery packs, including 15A-26650-R1, 25A-26650-R1, and 40A26650-R1 cells.
On November 27, 2001, Reimers sent an email to Milwaukee
following up on a November 15 conference call. In the email, Reimers
confirmed that the battery cells in the prototype packs had been 15A cells.
Reimers also reiterated that Moli had more powerful cells. He stated that
he had sent Milwaukee 25A cells (which Snap-On says Moli had previously
designed), would send additional cells in December, and was working to
finish development of 40A cells.
Plaintiffs disagree with Snap-On’s implicit contention that Moli had
higher amperage cells in the works from the start. They posit that it was
Milwaukee that had affirmatively asked about whether higher power cells
were available. However, von Sacken averred that the 25A cells could be
easily produced but were not provided initially as Moli could not at that
time manufacture them on a large scale. After Milwaukee’s request, Moli
assembled and provided 25A cells.

By way of example, here is found one of the parties’ classic and frivolous
attempts at disputing the facts. Plaintiffs respond to this fact with the word
“DISPUTED,” assuming that suffices to raise a dispute as to whether Reimers’
email is authentic. (Docket #201 ¶ 86). It does not. Fed. R. Civ. P. 56(c)(1). The rest
of the response says, “the assertions in Paragraph 86 are not supported by the cited
material.” Id. But why not? It is not the Court’s task to read Reimer’s entire
deposition, or some other document buried in the record, to find out what
Plaintiffs mean. Fed. R. Civ. P. 56(c)(1)(B) (requiring party opposing a proffered
fact to show “that the materials cited do not establish the absence or presence of a
genuine dispute”). The parties’ experienced and able counsel know these
elementary principles of summary judgment practice. Their choice to waste the
Court’s time on such matters is concerning.
3

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Milwaukee received the 25A cells from Moli by December 6, 2001.
Project meeting minutes note that Moli had changed the chemistry for the
25A cell from the 15A cell. The improvements were Moli’s idea, although
Plaintiffs nevertheless maintain that the 25A cell was not assembled until
they asked for it. See (Docket #213 ¶¶ 9–10).
In January and February of 2002, Moli made further changes to its
cells, including an electrolyte change, which enabled it to create a 30A cell
capable of performing better under a load. During this time, Moli projected
that a 30A cell could be delivered in early March 2002. By mid-April 2002,
Moli sent more than 20 battery packs equipped with Moli 30A cells to
Milwaukee.
Milwaukee tested the 25A and 30A cells in April and May 2002.
These tests included tests at various currents and under various conditions,
but among the current levels were 20 amp tests. Milwaukee test data dated
May 14, 2002 shows the 25A and 30A cells performing a 20A constantcurrent discharge test while maintaining capacity of 2.58 and 2.75 Ah,
respectively, over the entire discharge. Other test data shows a pack of 25A
cells was able to maintain a 2.90 Ah capacity over the entire discharge.
On May 2, 2002, Milwaukee employee Robert Disch (“Disch”)
calculated the 3A constant-current discharge capacity for the 25A-26650 cell
as 2.61 Ah. He found the cell had a calculated capacity of 2.58 Ah in the 20A
constant-current test. Disch also calculated the 3A constant-current
discharge capacity for the 30A-26650 cell as 2.79 Ah. He found the same cell
had a calculated capacity of 2.75 Ah when subjected to the 20A constantcurrent discharge. He sent his results to Meyer that day.
Zeiler updated the Milwaukee board of directors on the status of the
Li-ion development project on June 26, 2002 through a PowerPoint
Page 10 of 80

presentation. In this update, Zeiler reported that the 30A Li-ion battery
packs were outperforming existing Milwaukee NiCd packs by over 40
percent, as shown in screwing, drilling, and cutting tests. The presentation
further explained that when the 30A cells were placed under heavy
continuous discharge—e.g., 30–40 amp saw cutting—Milwaukee found that
the temperature of the packs would sometimes rise to unsafe levels. To
combat this, Reimers suggested adjusting the cell chemistry and electrode
size by creating a longer, thinner electrode and improved electrolyte. The
presentation also stated that one problem was that the “[c]ells need to
change from 65mm length to 70mm to maintain 3.0Ah capacity.” (Docket
#187-47 at 10).
On August 16, 2002, Moli sent 40A cells to Milwaukee, and August
22, 2002 meeting minutes indicate that battery packs with the 40A cells were
to be sent on September 1, 2002. On September 18, 2002, Meyer sent an email
to the project team reporting testing data for the 40A-R3 cells. Among
several tests, one showed that the 40A-R3 cell could deliver 96% of its rated
capacity when discharged at 20 amps and nearly 89% of its rated capacity
when discharged at 30 amps. On October 1, 2002, Meyer emailed the project
team reporting additional test data for the 40A-R2 cells, which showed the
40A-R2 cells were capable of delivering approximately 94% of their rated
capacity when discharged at 20 amps. The next day, on October 2, 2002,
Reimers emailed the project team confirming that Moli was attaining
similar test results.
Plaintiffs state that conception of their invention occurred on or
about November 21, 2002. Milwaukee’s contemporaneous documents
shows a priority date for U.S. Application No. 10/721,800 (“the ’800
Application”), the parent application for the subject patents, of November
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22, 2002. Plaintiffs explain that the November 21 date was chosen because
that was the day the inventors prepared an invention disclosure document.
Plaintiffs contend that they actually reduced to practice the
invention no later than December 12, 2002. That day, there was a project
meeting between Milwaukee and Moli. During the meeting, Reimers
reported the preliminary testing results of the new, longer 40A-26700 cells.
This testing showed these longer 40A cells delivered approximately 95% of
their rated capacity when discharged at 20 amps. The data from these tests
is reflected in the minutes for a January 9, 2003 project meeting. At that
meeting, Moli reported that the longer 40A cells would be ready to be
placed in battery packs by January 13, 2003. Moli also reported that it had
sent three such cells to Meyer by the date of the meeting.
2.

CLAIM CONSTRUCTION
Claim construction requires the Court to determine the meaning and

scope of the disputed claim terms. Markman v. Westview Instruments, Inc.,
517 U.S. 370, 384 (1996). The interpretation of patent claims is a question of
law for the Court. Id.
To construe a given claim, “the court should look first to the intrinsic
evidence of record, i.e., the patent itself, including the claims, the
specification and, if in evidence, the prosecution history.” Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) First in importance is
the language of the claim itself as allowed by the examiner. Bell Commc’ns
Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 619 (Fed. Cir. 1995).
The words of a claim are generally given their ordinary and
customary meaning, which is “the meaning that the term would have to a
person of ordinary skill in the art in question at the time of the invention.”
Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc).
Page 12 of 80

Tethering construction to a person of ordinary skill in the art is critical,
teaches the Federal Circuit, because such a person reads the words of the
claims against the context of their meaning in the relevant field of study,
including any special meanings or usages, and in light of closely related
documents such as the specification and the prosecution history. Id. at 1313.
Because of the sometimes specialized meanings attributed to terms based
on the field in question, general-purpose dictionaries are not always useful.
See id. Before resorting to such a resource, courts should begin with the
materials that a person of skill in the art would use: “the words of the claims
themselves, the remainder of the specification, the prosecution history, and
extrinsic evidence concerning relevant scientific principles, the meaning of
technical terms, and the state of the art.” Id.
After evaluating the claim language itself, the Federal Circuit
instructs that the specification “is the single best guide to the meaning of a
disputed term.” Vitronics, 90 F.3d at 1582. Although the patent specification
may not be used to rewrite the claim language, SuperGuide Corp. v. DirecTV
Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004), the specification may be used
to interpret what the patent holder meant by a word or phrase in the claim,
E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433
(Fed. Cir. 1988).
After considering the claim language and the specification, a court
may consult the final piece of intrinsic evidence: the patent’s prosecution
history. Vitronics, 90 F.3d at 1582. “[S]tatements made during the
prosecution of a patent may affect the scope of the invention.” Rexnord Corp.
v. Laitram Corp., 274 F.3d 1336, 1343 (Fed. Cir. 2001). This is especially true
if a particular interpretation of the claim was considered and specifically
disclaimed during the prosecution of the patent. Warner–Jenkinson Co., Inc.
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v. Hilton Davis Chem. Co., 520 U.S. 17, 30 (1997); Vitronics, 90 F.3d at 1582–
83.
Generally, the body of intrinsic evidence will eliminate any
ambiguity in the claim terms, rendering unnecessary any reference to
extrinsic evidence. Vitronics, 90 F.3d at 1583. Yet, if needed, a court may
consider extrinsic evidence, which “consists of all evidence external to the
patent and prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises.” Phillips, 415 F.3d at 1317–19. Extrinsic
evidence may assist the court in understanding the underlying technology,
the meaning of terms to one skilled in the art, and how the invention works,
but it may not be used in derogation of the intrinsic evidence. Id.
2.1

The 20 Amp Limitation

The heart of the parties’ dispute in this case is the interpretation of
the 20 Amp Limitation. This limitation reads: “the battery cells being
capable of producing an average discharge current greater than or equal to
approximately 20 amps.” The parties’ competing constructions are:
Plaintiffs’ Proposed Construction

Defendant’s
Proposed Construction

“the battery cells, when configured
together in a battery pack, are
capable of producing reasonably
close to 20 amps of discharge
current or greater over the course of
delivering their entire rated
capacity”

This claim term is indefinite under
35 U.S.C. § 112, ¶ 2. In the
alternative, “battery cells capable of
producing an average battery pack
discharge current greater than or
equal to approximately 20 amps
when used with a hand-held power
tool over a time period consistent
with the intended use of the tool.”

Page 14 of 80

The parties’ dispute, reduced to its essence, is quite straightforward: does
this limitation require the battery pack to continuously produce 20 amps or
greater of discharge current over its entire rated capacity, or must it merely
be capable of producing an average discharge current of 20 amps or greater
over its entire capacity?
The Court’s interpretive task is somewhat eased, as it is not writing
on a clean slate. Another branch of this Court, Magistrate Judge William
Callahan, construed this very limitation contained in the same patents in
2012. Milwaukee Elec. Tool Corp. v. Hitachi Koki Co., Ltd., No. 09–C–948, 2012
WL 10161527, at *3–4 (E.D. Wis. Dec. 11, 2012). Further, the Patent Trial and
Appeal Board (“PTAB”) construed this limitation during inter partes review
(explained further below, see infra Part 3.2.2). (Docket #179-11 at 9–11);
(Docket #179-12 at 7–8). Every adjudicative body that has assessed the 20
Amp Limitation has agreed with Plaintiffs’ proposed construction.
Although this Court is not bound by those prior decisions, see Jackson Jordan,
Inc. v. Plasser Am. Corp., 747 F.2d 1567, 1574 (Fed. Cir. 1984); Memory
Integrity, LLC v. Intel Corp., Case No. 3:15-cv-00262-SI, 2016 WL 1122718, at
*19 (D. Or. Mar. 22, 2016), they are persuasive, and this Court reaches the
same conclusion for largely the same reasons, Markman, 517 U.S. at 390–91
(1996) (observing that courts can achieve consistent claim construction
“through the application of stare decisis”); Key Pharm. v. Hercon Labs. Corp.,
161 F.3d 709, 716 (Fed. Cir. 1998); Evolutionary Intelligence, LLC v. Sprint
Nextel Corp., Case No. C–13–04513, 2014 WL 4802426, at *4 (N.D. Cal. Sept.
26, 2014) (noting that IPR proceedings constitute part of the prosecution
history).
First, the language of the limitation is not limited to any particular
application or tool, contrary to Snap-On’s proposed construction. Nothing
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in the claim language qualifies the limitation to discharge over a “nontrivial period of time,” as Snap-On proposes. Hitachi, 2012 WL 10161527, at
*4. Thus, the import of such language is that a pack satisfying this limitation
must be “capable of producing the required level of current at any point, in
any operation, with any high current hand held power tool.” (Docket #178
at 11).
The specification, the next-best source of information for purposes of
construction, corroborates this view. The patents-in-suit share a common
specification: “the battery pack 30 can supply an average discharge current
that is equal to or greater than approximately 20 A, and can have an
ampere-hour capacity of approximately 3 A-h.” (Docket #187-1 at 76). The
specification states that “the battery pack 30 can supply power to various
power tools, such as, a driver drill 300, a circular saw 305, and the like.” Id.
It can “power various power tools (including a driver drill 300 and a
circular saw 305) having high discharge current rates.” Id. The specification
states that the average discharge current associated with these exemplary
uses should be 20 amps or greater. Thus, the specification contemplates
many different applications and contexts for the battery pack in question,
which is incongruent with Snap-On’s suggestion that some specified tool,
under some specified time interval, be used as the sole benchmark.
As will be explained further below, because the skilled artisan would
know that the constant-current test is the method for measuring conformity
with the 20 Amp Limitation, Plaintiffs are not conjuring the phrases
“reasonably close” and “entire rated capacity” from thin air, although
Snap-On correctly notes that those terms are not found anywhere in the
intrinsic record. Instead, Plaintiffs are simply reading the limitation in the
way that it must be read; that is, with the standard explanation for how to
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measure it. The constant current test, as mentioned above, involves
discharging the pack at a constant current and measuring how long it can
sustain that current.4
In addition to the claim language and specification, the prosecution
history makes clear the distinction that Plaintiffs hope to draw between the
Moli pack and theirs. The initial Moli prototype cells could discharge 20
amps in some applications, some of the time, but this was not enough.
Indeed, it speaks volumes that the examiner, initially mistaking Moli’s
packs as Plaintiffs’, rejected them. In so doing, the examiner stated: “Per
one of the inventors, Gary Meyer, filed declaration under 37 CFR 1.132, it
seems the claimed battery pack is incapable of delivery a useful average
discharge current of 20 amps or greater.” (Docket #209-63 at 4). The
examiner also stated that because the prototype pack only had 5 lithiumion cells instead of the claimed 7-cells pack, there was “no convincing
evidence that more than 5 cells would make the power tool operates [sic] in
a useful and safe manner.” Id. Once the examiner’s misapprehension was
corrected, he allowed the claims to issue.

More specifically, according to Plaintiffs, the test for determining whether
a battery pack is capable of producing an average discharge current of 20 amps or
greater is conducted as follows: (1) a pack is fully charged; (2) the pack is
discharged at an estimated 1C rate based on the nominal capacity of the pack to
establish rated capacity; (3) the pack is again fully charged; and (4) the pack is
discharged at a constant current of 20 amps using an electronically controlled load.
When a pack is able to deliver approximately the same capacity while being
discharged at 20 amps as it does when discharged at a 1C rate, that demonstrates
the pack’s ability to provide 20 amps of discharge current over the course of
delivering its full capacity. This is the test that their expert, Dr. Mark Ehsani
(“Ehsani”), performed. (Docket #191-71 ¶¶ 6–7).
4

Page 17 of 80

Snap-On asks the Court to engraft an additional limitation onto the
20 Amp Limitation out of practicality—that is, because tools in the field are
not routinely turned on and their batteries run down completely without
pause. See (Docket #201 ¶¶ 5, 12–13). Snap-On reasons that “the word
‘average’ in the 20 Amp Limitation implies that the discharge current may
drop well below 20 amps so long as the average current remains above 20
amps.” (Docket #207 ¶ 127). According to Snap-On, it is unlikely that any
power too would have to deliver a constant current discharge reasonably
close to 20 amps for its entire rated capacity in any real-life application.
(Docket #201 ¶ 12).
But the standard of review is not what a person of skill in the art
would find realistic; it is instead what a person of skill in the art would
understand. There is no question that, putting aside matters of practicality,
a person of ordinary skill in the art would comprehend the meaning of the
20 Amp Limitation, including the requirement that 20 amps be
continuously delivered during the entire rated capacity of the battery pack.
Such a person would understand that the limitation describes the
capability, not the potential real-world use, of the invention. See Hitachi,
2012 WL 10161527, at *4 (“[T]he fact remains that the capacity of a battery
is normally measured by discharging at a constant current until the battery
has reached its terminal voltage, consistent with Metco’s construction.”).
This is true notwithstanding the fact that even Plaintiffs concede that tool
simulations are an important part of assessing the real-world functionality
of the ultimate product.5

Snap-On claims that Plaintiffs’ construction reads the word “average” out
of the claim language, (Docket #205 at 13), but the Court does not agree. Plaintiffs’
construction incorporates the concept of “average” as meaning “reasonably close
5

Page 18 of 80

Finally, the Court rejects Snap-On’s suggestion that the 20 Amp
Limitation is indefinite and therefore invalid. A patent must “conclude with
one or more claims particularly pointing out and distinctly claiming the subject
matter which the applicant regards as [the] invention” 35 U.S.C. § 112, ¶ 2
(emphasis added).6 If, when “read in light of the specification delineating
the patent, and the prosecution history, [a patent claim] fail[s] to inform,
with reasonable certainty, those skilled in the art about the scope of the
invention,” the claim is invalid as indefinite under Section 112. Nautilus, Inc.
v. Biosig Instrums., Inc., 134 S. Ct. 2120, 2124 (2014). A claim “must be precise
enough to afford clear notice of what is claimed, thereby appris[ing] the
public of what is still open to them.” Id. at 2129; see also Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Moreover, a reviewing
court must remember that “[i]t cannot be sufficient that a court can ascribe
some meaning to a patent’s claim; the definiteness inquiry trains on the
understanding of a skilled artisan at the time of the patent application, not
that of a court viewing matters post hoc.” Nautilus, 134 S. Ct. at 2130.

to” the required discharge current. Snap-On rightly notes that there are other
senses of the word “average,” including averaging a discharge current over a
specified interval, but Snap-On’s belief that its interpretation of the word is the
only reasonable one does not make it so. Moreover, the deposition testimony of
the named inventors on this point cannot undermine the clarity of the intrinsic
record, which supports Plaintiffs’ interpretation. See Kara Tech. Inc. v. Stamps.com
Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (finding that “extrinsic sources like expert
testimony cannot overcome more persuasive intrinsic evidence”).
Paragraph 2 of 35 U.S.C. § 112 was replaced with Section 112(b) by Section
4(c) of the Leahy-Smith America Invents Act (“AIA”), and Section 4(e) makes that
change applicable “to any patent application that is filed on or after” September
16, 2012. Pub. L. No. 112–29, § 4, 125 Stat. at 296–97. Because the applications
resulting in the patents-in-suit were all filed before that date, the Court refers to
the pre-AIA version of Section 112. See Eli Lilly & Co. v. Teva Parenteral Meds., Inc.,
845 F.3d 1357, 1370 n.8 (Fed. Cir. 2017).
6

Page 19 of 80

A claim is indefinite where it can be measured in several ways and
the claim language, considered against the specification and prosecution
history, do not provide adequate guidance on which method to use. See
Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1344–45 (Fed. Cir. 2015);
Eli Lilly, 845 F.3d at 1370. Put differently, “the patent and prosecution
history must disclose a single known approach or establish that, where
multiple known approaches exist, a person having ordinary skill in the art
would know which approach to select.” Dow Chem. Co. v. Nova Chems. Corp.,
803 F.3d 620, 634–35 (Fed. Cir. 2015).
However, “a patentee need not define his invention with
mathematical precision.” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d
1374, 1384 (Fed. Cir. 2005). Instead, “[t]he definiteness requirement
mandates

clarity,

while

recognizing

that

absolute

precision

is

unattainable.” Apple Inc. v. Samsung Elecs., Co., 786 F.3d 983, 1002–03 (Fed.
Cir. 2015) (quotations and alterations omitted), rev’d on other grounds in 137
S. Ct. 429 (2016); Nautilus, 134 S. Ct. at 2128 (recognizing that “[s]ome
modicum of uncertainty” may be tolerated). Indefiniteness is a question of
law and must, like any other invalidity defense, be proven by clear and
convincing evidence. Sonix Tech. Co., Ltd. v. Publ’ns Int’l, Ltd., 844 F.3d 1370,
1377 (Fed. Cir. 2017); Teva, 789 F.3d at 1345.
Snap-On’s indefiniteness objection has two aspects. First, it says that
Plaintiffs conveniently used functional language—the requirement for a 20amp discharge current—just at the point of novelty from prior art, which is
not permitted under General Electric Co. v. Wabash Co., 304 U.S. 364, 371
(1938). However, the Federal Circuit has explained that functional
language, standing alone, is not sufficient to render a claim indefinite.
Application of Swinehart, 439 F.2d 210, 213 (C.C.P.A. 1971); Cox Commc’ns,
Page 20 of 80

Inc. v. Sprint Commc’n Co. LP, 838 F.3d 1224, 1232 (Fed. Cir. 2016). Although
neither expressly considered the matter, is it worth noting that neither
Magistrate Callahan nor the PTAB had difficulty in construing the 20 Amp
Limitation, much less such insurmountable difficulty as to render the
limitation indefinite. Rather, the relevant materials provide a skilled artisan
with sufficient information to describe the claimed subject matter and
distinguish it from prior art, which is all that is required. See Microprocessor
Enhancement Corp. v. Tex. Instruments Inc., 520 F.3d 1367, 1375 (Fed. Cir.
2008). Snap-On devotes little space to this argument and does no more than
point out the functional language, expecting that effort to carry the day, and
so the Court need not address the point further. See Hardrick v. City of
Bolingbrook, 522 F.3d 758, 762 (7th Cir. 2008); United States v. Berkowitz, 927
F.2d 1376, 1384 (7th Cir. 1991).
The second aspect of the indefiniteness challenge is more involved.
According to Snap-On, the 20 Amp Limitation is fraught with uncertainty
as to how to test the “average discharge current” of the battery pack which
a person of ordinary skill in the art could not unravel, including in relation
to “how long the battery is used, the application or task for which the tool
is used, the acceptable voltage performance, and even the ambient
temperature.” (Docket #182 at 7). Put simply, Snap-On claims that a pack
might not be able to produce a constant 20-amp discharge current over its
entire rated capacity but could do so on average if used intermittently.
(Docket #187-5 ¶ 32). In light of this, one of its experts, Yet-Ming Chiang
(“Chiang”), opines that a pack must be tested in various ways that simulate
real-world applications. Id. ¶ 34. This makes Meyer’s 2001 cutting test and
pulse test at least as relevant—indeed more so—that the constant-current
test he performed. Id. ¶ 39; see also (Docket #187-13 163:6–23) (Reimers
Page 21 of 80

testifying that average discharge current denotes averaging the discharge
produced during pulse or profile tests). On this point, Snap-On asserts that
Magistrate Callahan failed to consider the issue of indefiniteness as
reinvented by the Supreme Court in Nautilus, rendering his opinion less
persuasive. See Dow, 803 F.3d at 630 (“[T]here can be no serious question
that Nautilus changed the law of indefiniteness.”).
Plaintiffs admit that tool simulation profiles are among the tests used
to assess the performance of Li-ion battery packs. (Docket #201 ¶¶ 14–15).
Moreover, other witnesses, include two of the named inventors, testified
that a battery pack could be run both intermittently and constantly to
ascertain an average discharge current. See id. ¶¶ 24–26. Because of the
diversity of potential testing conditions and applications, Chiang concludes
that skilled artisans could reasonably differ in how they assess whether the
20 Amp Limitation is met and that the patents-in-suit, even when
considered alongside the specification and prosecution history, do not
provide adequate instruction on which test should be used. (Docket #187-5
¶¶ 45–47); see also (Docket #187-10 47:19–48:18) (testimony of Plaintiffs’
expert during IPR, opining that continuously running a power tool until its
battery runs out is not a “typical” way such tools are operated).
The Court does not agree. The Federal Circuit has found indefinite
patent claims that do not teach how they are to be measured. For instance,
in Teva, a patent claim prescribed a particular “molecular weight” of a
product but did not specify which of three methods should be used to
measure it. Teva, 789 F.3d at 1345. Neither the claims nor the specification
provided guidance, and the prosecution history contained inconsistent
statements by the patentee about which measure was correct. Id. at 1344–
45.
Page 22 of 80

Likewise, in Dow, the court considered a claim that required
calculation of the “slope of strain hardening coefficient.” Dow, 803 F.3d at
631. The claim did not specify at which of several possible ways the “slope”
should be calculated. Id. at 632–33. The Court of Appeals found that a
skilled artisan would not be able to choose among them even after review
of the specification and prosecution history, and so the claim was indefinite.
Id. at 634. In so doing, it rejected the testimony of the plaintiff’s expert that
an artisan would know to select his method, since the expert’s method “was
not even an established method but rather one developed for this particular
case.” Id. at 635.
The situation here is different. As explained above, the claim
language, considered alongside the specification and prosecution history,
all indicate that the 20-amp discharge current must be constant throughout
the rated capacity of the battery, regardless of application. This is
determined by application of the constant-current discharge test, which the
evidence submitted by Plaintiffs establishes as an industry-standard test. It
is not, as was the case in Dow, an ad hoc test among other defensible methods
of measurement.
Plaintiffs offer a robust body of testimony to support the proposition
that the constant-current test is the proper way to measure the 20 Amp
Limitation. First, their expert, Ehsani, opined that a skilled artisan would
understand that the 20 Amp Limitation referred to the capability of a
battery pack under constant current discharge, not during a real-world
application. (Docket #191-71 ¶ 23).
Next is Zeiler, who testified that the constant current discharge was
“the industry standard and the de facto measuring stick we used to
determine whether a cell at that time. . .was capable of performing in a real
Page 23 of 80

world application.” (Docket #179-27 53:17–22). He explained that the “20
amp constant current discharge at the time was the test that was the bare
minimum a cell needed to do to be able to build the confidence for any
technical team to understand whether or not it could actually work in the
field.” Id. 53:25–54:4; see also id. 57:19–22 (to be successful, the cell at a
“minimum had to be able to deliver a 20 amp constant current discharge”).
Zeiler testified that 20 amps represented the low end of operational power
for a power tool, while the high end was somewhere around 80 amps.
(Docket #172 ¶ 128).
Similarly, Meyer claimed that he performed constant current
discharge testing on the Moli packs in 2001 because such tests “were and
are commonly used by power tool manufacturers to assess the suitability of
a battery product for powering a tool.” (Docket #179-29 ¶ 6). Snap-On notes
that Meyer admitted that a battery pack can be tested by other methods,
including averaging the discharge current over a given time interval, but
Meyer also opined that he would “normally” use a constant-current test.
(Docket #187-14 159:3–160:19); see also (Docket #203-62 at 5) (from
Handbook of Batteries, author David Linden notes that the constant-current
discharge

test

“is

becoming

more

popular

for

battery-powered

applications”). Indeed, even von Sacken, Moli’s former employee, testified
that the constant-current test was “a very typical way of testing cells”
because it made it “easy to measure capacity[.]” (Docket #203-49 65:18–
66:25).
Likewise, Selby testified that although the constant current test was
one of “multiple ways” to test a battery pack, it was the “most typical” or
“primary” test, and was used to cement “a basic first understanding or
check of the battery pack’s capability.” (Docket #179-32 32:9–33:4; id. 63:5–
Page 24 of 80

64:7 (noting that the constant current test was “a standard criteria” in the
industry); (Docket #179-34 ¶ 5) (averring that the constant current test was
“a normal test procedure used by Milwaukee Tool”). Importantly, he
opined that Meyer’s other 2001 testing, such as the cutting test, was not a
suitable method to determine whether the 20 Amp Limitation was met, as
it was “not a controlled or any kind of scientific-type test.” (Docket #179-32
34:10–35:8).
Snap-On points out that Meyer did not offer in his 2009 declaration
about his 2001 testing an explanation of how the 20 Amp Limitation should
be tested. Plaintiffs read Meyer’s declaration to show that failure on the
constant-current discharge test was sufficient to render the prototypes
inadequate, while Snap-On asserts that the results of the other tests,
including the cutting test, were indispensable to that ultimate conclusion.
(Docket #201 ¶ 31). In Plaintiffs’ view, the other tests merely assessed
“certain characteristics” of the prototype packs but were not necessary to
Meyer’s conclusion that the packs did not meet Plaintiffs’ discharge current
requirements. Id.
Snap-On places much emphasis on Meyer’s decision to run other
tests on the Moli prototypes in 2001, but it fails to provide persuasive
evidence that those other tests, including the cutting and pulse tests, were
industry-standard tests. Meyer’s choice to assess several characteristics of
the prototypes notwithstanding their failure on the crucial constant-current
discharge test is unsurprising; he is an inventor, and it behooved him to
explore every limit of the prototypes to see how they might be improved.

Page 25 of 80

Those efforts do not mean that every test he employed was necessary to his
conclusion that the packs failed to meet the 20-amp discharge requirement.7
For these reasons, Snap-On’s concerns with how long the battery is
used or its specific application are unavailing. Moreover, it is noteworthy
that the PTAB, reviewing Snap-On’s identical charge of indefiniteness
under Nautilus during inter partes review, came to the same conclusion.
(Docket #179-11 at 10–11) (finding that “one of ordinary skill in the art
would understand that the battery cells are capable of producing an
average discharge current greater than or equal to approximately 20 amps
under any set of reasonable operating conditions”) (emphasis added). The 20
Amp Limitation, though admittedly broad, is not indefinite simply because
it is broad. Id. (citing In re Miller, 441 F.2d 689, 693 (C.C.P.A. 1971)). And it
must be remembered that Snap-On is required to establish indefiniteness
by clear and convincing evidence. Sonix, 844 F.3d at 1377. Even were the
Court to find Snap-On’s evidence more persuasive than Magistrate

Interestingly, Snap-On seems to believe that Meyer’s 2009 declaration
regarding his 2001 testing of the Moli prototypes is reliable inasmuch as it
establishes that there was no accepted test for the 20 Amp Limitation, but that it is
unreliable to the extent it is used to show that the constant-current discharge test
is the appropriate standard. See (Docket #182 at 9 & n.2). The Court does not buy
in to this kind of cherry-picking, but even if it did, Snap-On is simply incorrect that
Meyer’s view of the correct test is “uncorroborated,” as Plaintiffs have proffered
other testimony and documentary evidence to substantiate Meyer’s position.
Thus, the Court in this instance does not share the sort of worry expressed by the
Federal Circuit in Akamai, cited by Snap-On, where the plaintiff tried to leverage
the subjective beliefs of a single inventor to define a claim term. See Akamai Techs.,
Inc. v. Cable & Wireless Internet Servs., Inc., 344 F.3d 1186, 1194 (Fed. Cir. 2003). The
presence of corroborating evidence in this case assuages any concern that Meyer’s
statements are self-serving, particularly because the statements came long after the
patent applications. See Phillips, 415 F.3d at 1313 (noting that claim terms are
defined with reference to “the effective filing date of the patent application”);
Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350 (Fed. Cir. 2001)
(describing need for corroborating evidence supporting an inventor’s testimony).
7

Page 26 of 80

Callahan or the PTAB did, it is still not as strong as it needs to be to support
a finding of indefiniteness.
What remains are Snap-On’s attempts to inject uncertainty into the
claim where little exists, such as with respect to “the acceptable voltage
performance” or “the ambient temperature.” The Federal Circuit has
rebuffed similar attempts to manufacture indefiniteness from the failure to
prescribe the precise parameters of testing functional limitations.
Koninklijke Philips N.V. v. Zoll Med. Corp., 656 F. App’x 504, 526 (Fed. Cir.
2016) (finding that lack of “absolute precision” on how to test functional
aspect of a claim did not prove indefiniteness by clear and convincing
evidence). Indeed, the PTAB recognized Snap-On’s proposed construction
for what it is—an effort to create uncertainty. (Docket #179-11 at 11)
(“Petitioner recognizes that its proposed construction ‘leaves uncertain
whether a given battery pack, depending on the particular tool and
application for which it is used, satisfies the 20 Amp Limitation.’”). Thus,
the Court concludes that whatever minor testing parameters may be left
undefined in the claim do not show that the term is indefinite. See VERVE,
LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119 (Fed. Cir. 2002) (“[T]he patentee
is not required to include in the specification information readily
understood by practitioners, lest every patent be required to be written as
a comprehensive tutorial and treatise for the generalist, instead of a concise
statement for persons in the field.”).
For the reasons stated above, the Court adopts Plaintiffs’ proposed
construction of the 20 Amp Limitation.
2.2

“Nominal Voltage”

The parties also dispute the construction of the term “nominal
voltage,” which is recited in Claims 5, 7 and 11 of the ’290 Patent, claims 5,
Page 27 of 80

7, and 11 of the ’173 Patent, and claims 1, 5, 9, 10, 12, 14–16, and 18 of the
’510 Patent. The parties’ competing proposals are:
Plaintiffs’ Proposed Construction

Defendant’s
Proposed Construction

“designated approximate voltage”

This claim term is indefinite under
35 U.S.C. § 112, ¶ 2.

This dispute is far easier to resolve than that concerning the 20 Amp
Limitation. As in that circumstance, here Snap-On alleges that “nominal
voltage,” which is not defined anywhere in the intrinsic record,8 is
indefinite. Like “average discharge current,” Snap-On believes that the
record does not supply the proper method of measuring what voltage is
considered “nominal.” Plaintiffs counter that the term means the
“designated approximate voltage.” They emphasize that the “nominal”
voltage is simply the denominated voltage, not the actual voltage as
obtained by any sort of measurement.
In Snap-On’s view, nominal voltage can mean several things,
including the voltage at the starting, midpoint, or some other point in the
life of the battery cell. Its expert, Chiang, opines that the term “nominal
voltage,” without a clarification as to the point of measurement, is not
capable of definition. See (Docket #187-5 ¶¶ 50–51). Additionally, one of the
named inventors, Jay Rosenbecker (“Rosenbecker”), testified that at the
time the patent was drafted, there “wasn’t a lot of agreement in the industry
I believe on what nominal voltage meant.” (Docket #187-10 192:4–22). To
his mind, it depends on what reference voltage one obtains, which might

The specification refers to battery cells with nominal voltages of 3.6V, 4V,
and 4.2V. (Docket #187-1 at 77).
8

Page 28 of 80

depend on the load applied. Id. For example, one could measure the opencircuit voltage, which is the voltage reading when no tool is connected to
the battery, or the closed-circuit voltage, which includes some defined load
being supplied by the battery to a tool. (Docket #201 ¶ 61). Snap-On notes
that in an internal presentation in 2007, Meyer and a colleague stated that a
28V battery pack was designated as such by multiplying the number of
cells, 7, by the voltage of each cell, 4V. They considered, however, the
possibility that the pack could be rated based on a measurement of the
average voltage, which would result in a pack voltage of 26.6V.
Similarly, says Snap-On, Meyer testified that a battery’s nominal
voltage depends on how charged the battery is. Id. ¶ 62. But his actual
testimony was in response to counsel’s questioning about whether there
exists a difference between “nominal voltage” and “nominal charged
voltage.” (Docket #187-14 109:7–110:3). It is not at all clear that he believes
that “nominal voltage” per se is a measured value. This is Plaintiffs’ view:
that “nominal voltage is not measured,” it is merely designated, so there
can be no problem arising from how to measure it. (Docket #201 ¶ 62);
(Docket #178 at 16) (“nominal voltage” is “not a measured voltage at all”).
As before, Magistrate Callahan and the PTAB agreed with Plaintiffs’
construction of this term. Snap-On points out, however, that as a technical
matter, the magistrate construed the term “nominal voltage range,” not
“nominal voltage.” See Hitachi, 2012 WL 10161527, at *7–8. Nevertheless, the
Court finds that the close similarity of the terms begets a similar treatment.
See (Docket #179-13 at 14) (PTAB ruling finding Judge Callahan’s
construction “informative”). More to the point, the PTAB found that “[i]n
general, ‘nominal’ is a term used in technological fields to indicate a stated
value is only an approximate, rather than exact value.” Id. Moreover,
Page 29 of 80

Plaintiffs’ and the PTAB’s views comport with the ordinary meanings of
the word “nominal,” as the dictionaries cited by the parties are in
agreement that a “nominal” value need not correspond to any actual or
observed value. (Docket #201 ¶ 55). For instance, Oxford says that for
manufactured articles, “nominal” as used in connection with an aspect of
the article means the value “stated or expressed but not necessarily
corresponding to the real value.” See id. Likewise, the Dictionary of
Engineering states that a “nominal voltage” is the “rated or named” voltage
but that “the actual values, or interval of values, may not coincide with” the
nominal voltage. See id. The Court is confident that this is how a skilled
artisan would read the term, and so it will adopt Plaintiffs’ construction.
2.3

“A Plurality of Cells Supported by the Housing”

The final term for construction is “a plurality of cells supported by
the housing,” a term appearing in claim 1 of the ’290 Patent and ‘173 Patent,
as well as claims 1, 9, 10, 12, 16, and 18 of the ‘510 Patent. The parties’
dispute focuses on the meaning of the word “supported,” and their
constructions are:
Plaintiffs’ Proposed Construction
“the weight of which is borne
either directly or indirectly
by the housing”

Defendant’s
Proposed Construction
“a plurality of cells engaged,
and held in position,
by the housing”

The parties agree that the word “supported” as used here has no
specialized meaning. The Court can, therefore, resort to “the widely
accepted meaning of commonly understood words.” Phillips, 415 F.3d at
1314. Magistrate Callahan did the same in his 2009 claim construction order,
noting that the key aspect of the meaning of the word “support” is that of

Page 30 of 80

bearing, directly or indirectly, the weight of the thing being supported. See
Hitachi, 2012 WL 10161527, at *5. Magistrate Callahan built his construction
on prior cases in which the word “support” was construed and using
applicable dictionary definitions. Id.9
These sources show that the word has a plain, ordinary, and rather
broad meaning. Snap-On’s proposed construction narrows the reach of the
word “support” to require the structure to hold the “supported” thing in
place, but they do not cite sufficiently clear authority limiting Plaintiffs to
this narrower sense of the word. See Wasica Fin. GmbH v. Cont’l Auto. Sys.,
Inc., 853 F.3d 1272, 1282 (Fed. Cir. 2017) (“[A]bsent a clear disavowal or
alternative lexicography by a patentee, he or she ‘is free to choose a broad
term and expect to obtain the full scope of its plain and ordinary
meaning.’”) (quoting Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d
1362, 1367 (Fed. Cir. 2012)). To be sure, Snap-On may be right that for
sensitive circuitry, it is important not only to hold something up against the
force of gravity but also secure it in a single position. (Docket #182 at 17).
But in light of the ordinary and far broader meaning of the word “support,”
Snap-On comes up short on persuasion. As was the case in Wasica, here
Plaintiffs are entitled to claim the full sense of the term since there is nothing
in the intrinsic record showing a disavowal of that interpretation. Wasica,
853 F.3d at 1282.
Snap-On’s argument arising from the patent specification does not
alter this result. Snap-on contends that while one embodiment described in

Webster’s defines “support” as “[t]o maintain in position so as to keep
from falling, sinking, or slipping.” (Docket #201 ¶ 64). It also defines the word as
“to bear the weight of.” Id. Similarly, Oxford defines “support” as “bear all or part
of the weight of; hold up.” Id.
9

Page 31 of 80

the specification depicts a battery pack supported by the housing itself,
another depicts the pack supported by end caps within the overall housing.
(Docket #182 at 19–20); (Docket #187-1 at 30, 60) (figures depicting each
embodiment). But the problem here is that although Snap-On’s reading of
the specification and figures is that the end caps are doing the supporting,
there are no words they can point to in the document to that effect. Certainly
the specification demonstrates an awareness that there are end-caps present
in one embodiment but not the other. However, nowhere does the
specification say that it is the end-caps doing the work of supporting the
cells. The Court, reading the specification language alongside the figures,
sees the end caps as simply part of the overall housing, which in turn
supports the cells. While Snap-On’s gloss on the specification may not be
unreasonable, the Court needs a “compelling reason,” not simply a
reasonable one, to depart from the usual practice of interpreting claim terms
so as to avoid excluding any of the embodiments. Wasica, 853 F.3d at 1282.
Thus, Snap-On’s arguments are unavailing, and the Court will adopt
Plaintiffs’ construction.
3.

SUMMARY JUDGMENT
Now that the Court has construed the disputed claim terms, it can

turn to the parties’ motions for summary judgment. Federal Rule of Civil
Procedure 56 provides that the court “shall grant summary judgment if the
movant shows that there is no genuine dispute as to any material fact and
the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a);
Boss v. Castro, 816 F.3d 910, 916 (7th Cir. 2016). A fact is “material” if it
“might affect the outcome of the suit” under the applicable substantive law.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). A dispute of fact is
“genuine” if “the evidence is such that a reasonable jury could return a
Page 32 of 80

verdict for the nonmoving party.” Id. The court construes all facts and
reasonable inferences in the light most favorable to the non-movant. Bridge
v. New Holland Logansport, Inc., 815 F.3d 356, 360 (7th Cir. 2016). The court
must not weigh the evidence presented or determine credibility of
witnesses; the Seventh Circuit instructs that “we leave those tasks to
factfinders.” Berry v. Chicago Transit Auth., 618 F.3d 688, 691 (7th Cir. 2010).
The party opposing summary judgment “need not match the movant
witness for witness, nor persuade the court that [its] case is convincing, [it]
need only come forward with appropriate evidence demonstrating that
there is a pending dispute of material fact.” Waldridge v. Am. Hoechst Corp.,
24 F.3d 918, 921 (7th Cir. 1994).
The parties have raised a host of disparate issues for the Court to
consider. To create a more focused narrative, the Court will address these
matters slightly out of order.
3.1

Defendant’s Motion10
3.1.1

Derivation

Snap-On first attacks the patents-in-suit as invalid under 35 U.S.C. §
102(f), which says that a person is not eligible for a patent if “he did not
himself invent the subject matter sought to be patented.” 35 U.S.C. § 102(f)
(2006). This is called “derivation,” because Section 102(f) reflects the
principle that one who derives an invention from another cannot patent it.
Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993). The AIA did away with
Section 102(f), but only for patent applications filed after March 16, 2013;

In its motion, Snap-On incorporates by reference its argument from its
claim construction briefing that the patents are invalid for indefiniteness. (Docket
#184 at 20). The Court has considered and rejected that argument, as explained
above. The analysis need not be repeated here.
10

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applications filed before that date remain governed by the pre-AIA version
of Section 102. Here, the battery-pack patents were all filed prior to March
16, 2013, so the former Section 102(f) still applies.
In order to establish derivation, Snap-On must prove, by clear and
convincing evidence, “both prior conception of the invention by another
and communication of that conception to the patentee.” Eaton Corp. v.
Rockwell Int’l Corp., 323 F.3d 1332, 1334 (Fed. Cir. 2003); Cumberland Pharm.
Inc. v. Mylan Institutional LLC, 846 F.3d 1213, 1218 (Fed. Cir. 2017).
Communication requires a sharing of the complete conception, sufficient to
enable one of ordinary skill in the art to construct and successfully operate
the invention. Hedgewick v. Akers, 497 F.2d 905, 908 (C.C.P.A. 1974). “All the
circumstances in the record must be considered in evaluating the
sufficiency of the communication.” Id.
“Conception is the formation in the mind of the inventor of a definite
and permanent idea of the complete and operative invention, as it is
therefore to be applied in practice.” Singh v. Brake, 317 F.3d 1334, 1340 (Fed.
Cir. 2003). An idea is sufficiently definite for conception “when the inventor
has a specific, settled idea, a particular solution to the problem at hand, not
just a general goal or research plan he hopes to pursue.” Burroughs Wellcome
Co. v. Barr Labs., 40 F.3d 1223, 1228 (Fed. Cir. 1994). A conception must
encompass all limitations of the claimed invention, Singh, 217 F.3d at 1340,
and “is complete only when the idea is so clearly defined in the inventor’s
mind that only ordinary skill would be necessary to reduce the invention to
practice, without extensive research or experimentation,” Burroughs
Wellcome Co., 40 F.3d at 1228. Indeed, “derivation is not proved by showing
conception and communication of an idea different from the claimed
invention even where that idea would make the claimed idea obvious.”
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Cumberland Pharm., 846 F.3d at 1219. Furthermore, “conception is not
complete if the subsequent course of experimentation, especially
experimental failures, reveals uncertainty that so undermines the
specificity of the inventor’s idea that it is not yet a definite and permanent
reflection of the complete invention as it will be used in practice.” Burroughs
Wellcome Co., 40 F.3d at 1229.
When a party seeks to prove conception via the testimony of a
putative inventor, the party must proffer evidence corroborating that
testimony. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir. 1996).;
Price, 988 F.2d at 1194. Otherwise, that person “might be tempted to
describe his actions in an unjustifiably self-serving manner in order to
obtain a patent or to maintain an existing patent.” Singh, 317 F.3d at 1340.
Yet there is no particular form that the corroboration must take; rather,
whether a putative inventor’s testimony has been sufficiently corroborated
is determined by a “rule of reason” analysis, in which “an evaluation of all
pertinent evidence must be made so that a sound determination of the
credibility of the inventor’s story may be reached.” Price, 988 F.2d at 1195.
Snap-On claims that Plaintiffs derived the present invention from
Moli, which had conceived of it and communicated it to Plaintiffs. This is
so, says Snap-On, even if one finds that Plaintiffs have the proper
construction of the 20 Amp Limitation. The Court has so construed the 20
Amp Limitation, so it proceeds from that starting point.
The argument here rests on both Moli’s initial sales pitch regarding
Li-ion batteries and its work with Milwaukee to thereafter improve the cells
to a point acceptable to Milwaukee. First, according to Snap-On, it was Moli
that first approached Milwaukee with the idea of substituting Li-ion battery
cells for the existing NiCd battery cells in high-power cordless tools. As
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demonstrated in the Bosch 24V Power Presentation, Moli retrofitted a
standard NiCd battery pack with Li-ion batteries, hooked it up to a tool and
used it to cut wood and metal. Moli also described the cells and their
benefits for cordless tools, and then provided Milwaukee with a working
prototype of a Li-ion battery pack so that Milwaukee could test it.
Though Moli initially provided a prototype pack with 15A cells, it
told Milwaukee it had higher powered cells and quickly provided them. All
through the development process, Moli identified and worked on changes
to cell chemistry and structure to improve power and reliability. For
instance, in an internal email to Milwaukee corporate counsel, Rosenbecker
stated that he did not know the “exact chemistry of the packs” and that
“[t]his is probably proprietary information on Moli’s end.” (Docket #209-42
at 2). Milwaukee even told the Patent Office that it did not invent a Li-ion
battery cell. It touted instead that “[t]he solution developed by Milwaukee
was not based on a revolutionary battery cell but on its expertise in making
battery packs for power tools.” (Docket #187-59 at 12).
According to Snap-On, Moli not only provided cells, but it provided
Li-ion battery packs with the Li-ion cells already installed. These included
cells designated 25A, 30A, and finally 40A. As demonstrated by
Milwaukee’s own test data, the Li-ion cells provided by Moli in sample
battery packs to Milwaukee throughout 2001 delivered between 94% and
97% of their rated capacities when discharged with a laboratory load at a
constant current of 20 amps. Snap-On believes that this constitutes meeting
the 20 Amp Limitation as construed by Plaintiffs. Thus, in Snap-On’s view,
it was Moli, not Milwaukee, that conceived of this series of Li-ion cells that
met the 20 Amp Limitation, and Moli did so well in advance of Milwaukee’s
claimed conception date of November 21, 2002.
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Plaintiffs’ response focuses on both who conceived of the invention
and the completeness of the conceptions communicated to it by Moli. First,
Plaintiffs firmly believe that it was they who conceived of, and demanded
production of, a battery cell that actually fulfilled the 20 Amp Limitation.
Moli, as a battery cell manufacturer, simply supplied battery cells that
Milwaukee requested and assembled the packs to the specifications
Milwaukee set.
Second, contend Plaintiffs, the improved cells developed during the
joint Milwaukee-Moli project, while admittedly better than the initial 15A
cells provided to Meyer in September 2001, were still not strictly compliant
with the high bar set by the 20 Amp Limitation—that is, a discharge of
reasonably close to 20 amps over the battery pack’s entire rated capacity.
Not until the 40A cells came into being do Plaintiffs contend that the
invention was reduced to practice. Moreover, say Plaintiffs, the higherpower cells, whatever their capabilities, did not disclose the complete
invention, for they were only cells and not completed battery packs, as the
patents-in-suit describe. Finally, Plaintiffs assert that Moli at most
developed the battery cells themselves, not the packs which are an
indispensable part of the complete invention.
The Court finds Plaintiffs’ position to be a more accurate reflection
of the record evidence. See Price, 988 F.2d at 1190 (“While the ultimate
question of whether a patentee derived an invention from another is one of
fact, the determination of whether there was a prior conception is a question
of law, which is based upon subsidiary factual findings.”) (internal citations
omitted). Moli’s initial 15A cell, while promising, fell well short of the 20
Amp Limitation. So too did the next cell, the 25A, for which the discharge

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current of 20 amps could not be maintained for reasonably close to the
entire rated capacity of the pack.
Moreover, even if one or more of the later-developed cells were
sufficient to meet the 20 Amp Limitation, the tests on which Snap-on relies
were largely conducted on single cells, not whole packs, and those tests
were conducted in May 2002, well after Milwaukee’s direction to Moli to
create a higher power battery pack. Snap-On’s implicit contention that it
was easy to extrapolate single cells into a pack is not one the Court can agree
with, since derivation is not proved by merely rendering the final
conception obvious. Cumberland Pharm., 846 F.3d at 1219.
More importantly, these later cells were conceived by Milwaukee
and assembled by Moli. To the extent the project was a joint venture, with
both Moli and Milwaukee contributing some advances or improvements
over time, it cannot be said that Moli conceived of the final invention first
(or at all, for that matter). As it stands, the record shows that “Moli was a
supplier of a component part of the invention working at the direction of
the true inventors—Milwaukee.” (Docket #200 at 17). In such instances, the
Federal Circuit provides that “[a]n inventor ‘may use the services, ideas,
and aid of others in the process of perfecting his invention without losing
his right to a patent.’” Shatterproof Glass Corp. v. Libbey–Owens Ford Co., 758
F.2d 613, 624 (Fed. Cir. 1985) (quoting Hobbs v. United States Atomic Energy
Comm’n, 451 F.2d 849, 864 (5th Cir. 1971)).
It is untrue, as Snap-On contends, that Milwaukee simply waited
around for Moli to supply progressively more powerful cells. (Docket #216
at 7). Indeed, the contemporaneous record reflects that, at worst for
Milwaukee, the parties at the time conceived of their work as joint
inventorship, as reflected in their joint ownership of the invention under
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their 2003 agreement—discussed further below, see infra Part 3.2.1—prior
to Moli’s 2006 assignment of its rights to Milwaukee. And it is undisputed
that Moli contributed only the battery cells and appeared to have little or
no involvement in the design or manufacture of the packs’ housing. The
facts of this case do not sustain a claim that Moli was the sole and prior
inventor here. See Hess v. Advanced Cardiovascular Sys., Inc., 103 F.3d 976, 981
(Fed. Cir. 1997) (“[W]hether particular suggestions and contributions of
third persons amount to co-inventorship turns on the facts of the particular
case.”). On the whole, the circumstances surrounding Moli and
Milwaukee’s interactions reflect a course of experimental failures on the
way to success. Burroughs Wellcome Co., 40 F.3d at 1229. They do not
establish that Moli conveyed a definite and firm idea of the completed,
operable invention. Id.; Singh, 317 F.3d at 1340. Accordingly, Moli did not
conceive of the invention before Milwaukee, and Snap-On’s derivation
defense therefore fails.
3.1.2

Marking and Pre-Suit Damages

Next, Snap-On challenges Plaintiffs’ claim that they are entitled to
pre-suit damages for the ‘290 Patent under 35 U.S.C. § 287(a).11 To get this
category of damages, the statute requires that Plaintiffs give actual notice
of their patents to alleged infringers, or provide them constructive notice
by marking their products with the applicable patent numbers. Id. “The
purpose of the constructive notice provision is to give patentees the proper
incentive to mark their products and thus place the world on notice of the

The parties agree that neither Plaintiffs’ nor their licensees’ products
embodying the ‘173 and ‘510 Patents have been marked with the pertinent patent
numbers. Accordingly, Plaintiffs contend they seek pre-suit damages only for
infringement of the ‘290 Patent.
11

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existence of the patent.” Am. Med. Sys., Inc. v. Med. Eng’g Corp., 6 F.3d 1523,
1537 (Fed. Cir. 1993). Thus, the statute defines that “[a patentee] is entitled
to damages from the time when it either began marking its product in
compliance with [S]ection 287(a)[, constructive notice,] or when it actually
notified [the accused infringer] of its infringement, whichever was earlier.”
Id. Plaintiffs do not contend that Snap-on received actual notice prior to this
lawsuit, (Docket #200 at 25 n.12), so the Court need only determine whether
they had constructive notice.
The Federal Circuit requires that “once marking has begun, it must
be substantially consistent and continuous in order for the party to avail
itself of the constructive notice provisions of [Section 287(a)].” Id. Plaintiffs
have the burden of pleading and proving, by a preponderance of the
evidence, that they complied with the statutory requirements. See Nike Inc.
v. Wal–Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998); Motorola, Inc. v.
United States, 729 F.2d 765, 770 (Fed. Cir. 1984). Compliance with Section
287(a) is a question of fact. Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed.
Cir. 1996).
The marking requirement applies to both Plaintiffs and their
licensees or other authorized users. Amsted Indus. Inc. v. Buckeye Steel
Castings Co., 24 F.3d 178, 185 (Fed. Cir. 1994). However, “with third parties
unrelated to the patentee, it is often more difficult for a patentee to ensure
compliance with the marking provisions.” Maxwell, 86 F.3d at 1111. Thus,
the Court of Appeals applies a “rule of reason” approach and holds that
“substantial compliance may be found to satisfy the statute.” Id. As a result,
the mere number of products sold without proper marking, standing alone,
is not conclusive of whether the marking can be considered “substantially
consistent and continuous.” Id. Rather, when the failure to mark is caused
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by someone other than the patentee, the court may consider whether the
patentee made reasonable efforts to ensure compliance with the marking
requirements. Id.
Generally, evidence of overarching policies or practices with regard
to marking, or monitoring licensees’ marking, will not do. See Von Holdt v.
A-1 Tool Corp., 714 F. Supp. 2d 863, 871 (N.D. Ill. 2010). There is no strict
requirement that testimony about practices be backed up by documentary
evidence, however. See Nike, 138 F.3d at 1447. The inquiry is flexible, and
the court need only be presented with evidence sufficient to convince a
reasonable jury that compliance with the statute was achieved. Von Holdt,
714 F. Supp. 2d at 871.
With these principles in mind, the Court turns to Plaintiffs’ marking
efforts in this case. The ‘290 Patent was issued in June 2009 and is set to
expire in November 2023. Plaintiffs granted licenses to five competitors
prior to the filing of this suit. (Any post-filing licenses would, of course,
have no bearing on constructive notice, since at that time actual notice
would have been achieved.) The licenses included provisions requiring the
licensees to mark the relevant products, though the specified marking
period varied from license to license.
In an affidavit, Milwaukee’s counsel, Elizabeth Miller (“Miller”),
explained the company’s efforts to monitor licensee marking. (Docket #6144). She avers that “specific unit sales data is not available for the various
licensees which makes it impossible to provide an exact calculation of
marking compliance by a percentage of units.” Id. at 4. Miller instead
provides a chart which sets forth each licensee’s “Compliance in percent of
potential marking months.” Id. at 6.

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The chart reflects that three of the pre-suit licensees had agreements
to mark which cover the entire period of their licenses, at least until the date
of filing the present suit. (Docket #61-44 at 6). For two of them, however,
the required marking periods expired in September 2013, around thirteen
months before this action was filed. Id. Another licensee’s marking period
was only four years, though in that instance the fourth year fell after the
filing of this lawsuit. Id. In total, assuming that the marking agreement was
actually and consistently followed (something Snap-On disputes), marking
compliance for Plaintiffs and their licensees was about 89%. Id.
Of course, as the Court previously observed, “Miller never describes
how and when products were marked, only that licensees were supposed
to be marking.” Milwaukee Elec. Tool Corp. v. Chervon N. Am. Inc., Case No.
14–CV–1289–JPS, 2017 WL 2445845, at *6 (E.D. Wis. June 6, 2017). Instead,
she simply avers in a general fashion that “Plaintiffs [] followed up with
their licensees and monitored their products to ensure compliance with
their marking obligations.” (Docket #61-44 at 6). David Selby testified to this
end, too, stating that he recalled doing “some auditing and checking of
competitors to make sure that they were following through.” (Docket #20368 110:17–111:5). He did not have any more specific recollection than that.
See id. Consistent with Miller and Selby, Plaintiffs’ corporate representative
could provide no specific detail about monitoring efforts, and only testified
that he was told that the “legal department was monitoring the market.”
(Docket #218-22 198: 20–199:2).
Snap-On asserts that Plaintiffs’ evidence would not enable a
reasonable jury to find compliance with the statute. Snap-On contends first
that although Plaintiffs had agreements requiring marking, they made little
effort to actually monitor marking and ensure compliance. For instance, to
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support their compliance efforts, Plaintiffs proffer an email string from
2012, in which Miller contacted one licensee to inquire after its marking
efforts. (Docket #203-93). However, the string of emails do not shed light on
the licensee’s actual marking efforts. Id. In another email with another
licensee, while marking is discussed, there is nothing said about whether it
is occurring; rather, the communication is about the terms of the marking
provision itself as part of prospective license negotiation. (Docket #203-95).
However, it is worth noting that another Milwaukee licensee avers that it
has used its best efforts to comply with its marking obligations. (Docket
#203-70 at 6). Snap-On says that no actual evidence of marking by this
licensee during the relevant period has been produced, but it does not have
evidence to show that the affiant is being untruthful or lacks knowledge of
the matter.
Second, Snap-On asserts that the gaps in marking periods create an
inference that marking was not done during those periods. This includes
the two licensees whose marking obligations expired over a year before this
action was filed.12 For one of them, Snap-On has evidence that an unmarked
product was available for sale in June 2013. (Docket #217 ¶ 80). Moreover,
though Plaintiff proffers photos of some marked products, Snap-On points
out that there is no evidence that any marking was actually done during the
relevant pre-suit period. To be fair, one of the photos obviously dates from
2013. (Docket #202-7). The others, however, are either undated or post-date
the filing of this lawsuit. See, e.g., (Docket #202-1, #203-79, #203-80).

Snap-On also seems to assert that the licensee whose marking obligations
expired after four years, but still post-filing, does not satisfy the “continuous”
aspect of marking. (Docket #217 ¶ 75). The Court does not agree, as any need to
put Snap-On on constructive notice expired on the date this suit was filed. From
then on, it had actual notice.
12

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In response, Plaintiffs attest that they have always consistently
marked their own products, totaling approximately 33 million products
sold over the 64 months from patent issuance to the filing of this case. SnapOn does not challenge Plaintiffs’ own marking. Further, Plaintiffs counter
that the two licensees without complete marking-period coverage are
among five. In Plaintiffs’ view, their overall rate of compliance, considering
Plaintiffs and all licensees collectively, is sufficient to satisfy the statute.
Specifically, Miller avers that Plaintiffs’ licensees sold millions of additional
licensed products covered by the ‘290 Patent, but that Plaintiffs themselves
accounted for about 50% of the market share. The two licensees whose
contracts freed them from marking obligations in September 2013 made up
only around 11% of the market. Thus, say Plaintiffs, even if the two
licensees immediately stopped marking when their obligation expired, the
result would not mean that Plaintiffs had fallen short of whatever threshold
is required for “substantially consistent and continuous” marking.
After reviewing the state of the record with respect to marking, the
Court concludes that Plaintiffs have raised a jury question as to whether
they and their licensees complied with their marking obligations. As a
threshold matter, Miller’s averments appear to raise triable issues as to
compliance with Section 287(a). Indeed, in Sentry Protection Products, Inc. v.
Eagle Manufacturing Co., 400 F.3d 910, 918 (Fed. Cir. 2005), the Federal
Circuit overturned the grant of summary judgment in the defendant’s favor
on constructive notice where the plaintiff “came forth with an affidavit
stating that its products were marked, together with documents showing
sales in that period.” The court found that such an offering was “not so
‘conclusory’ or ‘lacking in factual support’” as to permit a ruling as a matter
of law. Id.
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Like the plaintiff in that case, here Miller has averred that Plaintiffs
undertook efforts to ensure marking compliance and provided sales data
showing the volume of sales of marked and potentially unmarked
products. These are broad claims, to be sure, but if they are believed, the
jury could find that marking had consistently been occurring. And they are
supported in some measure by other corroborating evidence, such as the
averment of one licensee that it used its best efforts to comply with its
marking obligations, the testimony of Selby and Milwaukee’s corporate
representative, both of whom testified that Milwaukee audited marking
compliance, and at least one photo showing a properly marked product
sold by a licensee during the relevant period. Without doubt, Snap-On has
revealed some weaknesses in Plaintiffs’ evidence, such as the undated
photos, the irrelevant emails, and the lack of specifics as to Milwaukee’s
audit procedures. See Hypertherm, Inc. v. Am. Torch Tip Co., No. 05–CV–373–
JD, 2009 WL 57525, at *3 (D.N.H. Jan. 7, 2009). But the Court cannot say that
Plaintiffs’ evidence is so lacking that no reasonable factfinder could
conclude that Plaintiffs’ monitoring efforts were reasonable. See K&K Jump
Start/Chargers, Inc. v. Schumacher Elec. Corp., 52 F. App’x 135, 141 (Fed. Cir.
2002) (rejecting notion that “that bare evidence of a contractual provision
requiring marking can never constitute reasonable efforts by the patentee
to ensure that a licensee is marking the products properly,” but affirming
summary judgment where patentee “took no steps” to ensure compliance
and proffered no evidence of properly marked products in the
marketplace).
This is true notwithstanding the wrinkle added by the two errant
licensees. Assuming they marked no products after their obligation to do
so expired, there remains an overall 89% marking rate, which could still
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suffice as “substantially consistent and continuous” marking. See Maxwell,
86 F.3d at 1111 (95% marking compliance, coupled with evidence of
monitoring licensee’s marking efforts, sufficed to show compliance with
Section 287(a)); Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357, 1375
(Fed. Cir. 2010) (88%–91% marking rate was sufficient to comply with
Section 287(a)); Koninklijke Philips N.V. v. Zoll Med. Corp., Civil Action No.
10–11041–NMG, 2017 WL 2773834, at *5 (D. Mass. June 26, 2017) (even low
end of disputed range of marking compliance, 65%, while not “a
particularly high percentage,” was not so low as to warrant summary
judgment); Imagexpo, L.L.C. v. Microsoft Corp., 299 F. Supp. 2d 550, 554 (E.D.
Va. 2003) (denying summary judgment on marking because “[w]hether [a
patentee] consistently marked ‘substantially all’ of the patented products
and whether the evidence is credible and reliable, appear to be classic issues
for resolution by the trier of fact”).13 Consequently, Plaintiffs will be
permitted to make that argument to the jury, and it will be for the jury to
make the ultimate determination as to whether their evidence carries the
day.

Snap-On’s effort to distinguish these cases is unavailing. First, as to the
district court decisions, Snap-On asserts that they are inapt because they concern
marking by the patentee, not licensees. (Docket #216 at 19 n.9). But the marking
requirements are undoubtedly less strict when licensees are involved. Maxwell, 86
F.3d at 1111. Accordingly, if a patentee can get away with marking compliance at
a certain percentage, a licensee should be able to as well. Second, Snap-On claims
that Funai is not relevant because it involved resale of unmarked goods, not sale
by licensees. (Docket #216 at 19 n.9). Yet the Court of Appeals in that case did not
draw the sort of distinction Snap-On proposes. To the contrary, it applied the same
“rule of reason” approach as it would in a case involving a licensee. Funai, 616 F.3d
at 1375. That analysis is used “when others than the patentee are involved in sales
to the public,” regardless of their particular title or posture. See id.
13

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Nor will the Court, on the state of record at this time, carve out any
purported period of non-compliance with the statute. See Tulip Computers
Int’l B.V. v. Dell Computer Corp., Civil Action No. 00–981–KAJ, 2003 WL
1606081, at *15–16 (D. Del. Feb. 4, 2003); Kimberly-Clark Worldwide, Inc. v.
First Quality Baby Prods., LLC, Civil No. 1:09–CV–1685, 2013 WL 1821593, at
*4 (M.D. Pa. Apr. 30, 2013). This may be a reasonable course of action in a
case where the evidence clearly shows initial compliance with marking
obligations and a definite end to that compliance. In such a case, it could be
argued that the failure to employ consistent and continuous marking might
negate any previously achieved constructive notice. See Am. Med. Sys., 6
F.3d at 1537–38 (observing that “[t]he world cannot be ‘put on notice’ if the
patentee marks certain products, but continues to ship unmarked
products. Therefore, [plaintiff] was not in full compliance with the marking
statute while it continued to ship its unmarked products, which continued
to mislead the public into thinking that the product was freely available.”)
Id. But here, as noted above, disputes abound as to whether marking
actually occurred in a consistent and continuous manner. Indeed,
construing the facts in Plaintiffs’ favor, one might reasonably conclude that
consistent marking by the other three licensees kept Snap-On on
constructive notice despite any purported failure to mark by the two
licensees whose marking periods expired. The Court is not equipped to
resolve such disputes, so they must be left to the jury.
3.2

Plaintiffs’ Motion
3.2.1

Assignor Estoppel

The first of Plaintiffs’ arguments—assignor estoppel against SnapOn—was actually raised by Plaintiffs in their response to Snap-On’s
motion, not in their own motion. However, because Plaintiffs bear the
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burden to prove that assignor estoppel bars Snap-On’s invalidity claims,
the Court addresses it as though it was raised in Plaintiffs’ own motion.
Assignor estoppel “is an equitable doctrine that prevents one who
has assigned the rights to a patent. . .from later contending that what was
assigned was a nullity.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220,
1224 (Fed. Cir. 1988). The point of the doctrine is to prevent an assignor’s
windfall—that is, profiting from selling his rights in a patent and then
profiting again by invalidating the patent, thereby regaining his ability to
practice the invention freely. See MAG Aerospace Indus., Inc. v. B/E Aerospace,
Inc., 816 F.3d 1374, 1379–80 (Fed. Cir. 2016). Assignor estoppel also applies
to those in privity with the assignor, and the determination of privity
requires an equitable consideration of all relevant facts and circumstances.
See Shamrock Tech. v. Med. Sterilization, Inc., 903 F.2d 789, 793–94 (Fed. Cir.
1990). Application of the doctrine is within the “sound discretion” of the
trial court. See Carroll Touch, Inc. v. Electro Mech. Sys., 15 F.3d 1573, 1579 (Fed.
Cir. 1993).
In this case, Plaintiffs contend that Snap-On and Moli have colluded
to invalidate the patents-in-suit. It is undisputed that Milwaukee and Moli
entered into an agreement in 2003 which provided for joint ownership of
the invention at issue here. Moli assigned its rights in the invention to
Plaintiffs in 2006. It is likewise undisputed that Moli itself is not violating
any principle of assignor estoppel; it is not a party to this proceeding and
has never tried to challenge the patents itself.
Plaintiffs’ theory is that Snap-On is in privity with Moli and therefore
barred by the same assignor estoppel that would prevent Moli’s
participation in this suit. Plaintiffs claim that Snap-On worked with Moli to
create allegedly infringing battery cells for Snap-On’s use in its products.
Page 48 of 80

Further, Snap-On has been using former Moli employees, including Reid,
Reimers, and von Sacken, to offer biased opinions and dig up confidential
or damaging information from Moli on Snap-On’s behalf. Additionally,
Plaintiffs complain that communications between Moli and Snap-On’s
counsel show an effort to feed useful information for Snap-On to deploy
against Plaintiffs in this action.
This theory does not hold water. But before describing its lack of
merit, the Court must address another wrinkle here: Plaintiffs did not assert
assignor estoppel in any prior pleading. The parties agree that assignor
estoppel is an affirmative defense that must be pleaded. See Semiconductor
Energy Lab. Co., Ltd. v. Nagata, 706 F.3d 1365, 1370 (Fed. Cir. 2013); Fed. R.
Civ. P. 8(c)(1). They have now sought leave to amend their pleadings to
include it, (Docket #220), but that motion was not filed until after the
summary judgment deadline had passed. Thus, the Court has to consider
not simply whether the defense is meritorious, but also whether Plaintiffs
should be permitted to raise it at all.
The Court answers both those questions in the negative. A court may
decide that a claim is futile, and therefore deny leave to amend, if it would
not survive a motion for summary judgment. Bethany Pharmacal Co. v. QVC,
Inc., 241 F.3d 854, 861 (7th Cir. 2001); Wilson v. Am. Trans Air, Inc., 874 F.2d
386, 392 (7th Cir. 1989). That is the case here. Despite Plaintiffs’ suspicions
and speculation that Snap-On and Moli are in cahoots, the relevant
authorities set a far higher bar for finding that privity exists.
The Federal Circuit has explained that
[p]rivity, like the doctrine of assignor estoppel itself, is
determined upon a balance of the equities. If an inventor
assigns his invention to his employer company A and leaves
to join company B, whether company B is in privity and thus
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bound by the doctrine will depend on the equities dictated by
the relationship between the inventor and company B in light
of the act of infringement. The closer that relationship, the
more the equities will favor applying the doctrine to company
B.
Shamrock Techs., 903 F.2d at 793. Thus, the most common circumstance
envisioned by the Court of Appeals for application of assignor estoppel is
when an inventor himself assigns his rights away, then joins another firm
and helps that firm infringe the patent and defend against the eventual
lawsuit. See Diamond Scientific, 848 F.2d at 1225 (inventor who participated
actively in patent application process and executed inventor’s oath was
estopped from challenging the patent after forming his own firm producing
infringing products).
Of course, that did not occur here. Plaintiffs do not concede, and
indeed vigorously oppose, the notion that any Moli employee is an inventor
as to the patents-in-suit. Instead, the record reflects that only Moli the
corporate entity had any ownership interest in the patents, and even that
was joint with Plaintiffs. Thus, Snap-On’s entreaties to former Moli
employees are not immediately apparent as the sort of side-switching that
assignor estoppel is meant to proscribe.14

Plaintiffs suggest in their reply that Snap-On tried to collude with current
Moli employees, including Tweten and a man named Paul Craig, (Docket #230 at
11), but it offers little evidence as to the nature of the interactions, and the Court
will not speculate their argument into existence. Moreover, evidence regarding
these individuals was provided for the first time in Plaintiffs’ reply, which is not
the proper place for new evidence to arise. Studio & Partners v. KI, No. 06–C–0628,
2008 WL 426496, at *6 (E.D. Wis., Feb. 14, 2008) (“[I]t should go without saying that
a reply brief [] is hardly the correct vehicle for raising new arguments[.]”) (citing
TAS Distrib. Co., Inc. v. Cummins Engine Co., Inc., 491 F.3d 625, 630–31 (7th Cir.
2007)).
14

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Nevertheless, the privity inquiry is all-encompassing, so the lack of
such an obvious connection between Moli and Snap-On is not fatal. But a
holistic assessment of the circumstances surrounding Snap-On’s dealings
with Moli and former Moli employees do not permit an inference of privity.
In Shamrock Technologies, a named inventor left his company and became a
vice-president at another. Id. at 794. He then oversaw at this second
company the development of the facilities and processes to manufacture
infringing products. Id. The Federal Circuit found it important that the
inventor did not become a mere run-of-the-mill employee at the second
company; instead, “the undisputed facts establish[ed] [the company’s]
direct involvement of [the inventor] in [its] infringing operations. [The
company] clearly availed itself of [the inventor’s] ‘knowledge and
assistance’ to conduct infringement.” Id. (quoting Mellor v. Carroll, 141 F.
992, 994 (C.C.D. Mass. 1905)); see also Stubnitz–Greene Spring Corp. v. Fort Pitt
Bedding Co., 110 F.2d 192, 195 (6th Cir. 1940) (privity between assignorinventor and company of which he was principal stockholder, president,
and general manager).
By contrast, in a case cited by the Federal Circuit in Shamrock, the
Ninth Circuit concluded that a mere contractual relationship as buyer and
seller does not give rise to privity sufficient to support assignor estoppel.
U.S. Appliance Corp. v. Beauty Shop Supply Co., 121 F.2d 149, 151 (9th Cir.
1941). Instead, the level of financial interconnectedness required is usually
much greater, including situations “in which the actual assignor almost
envelopes the other entity,” or “one entity [enjoys] financial control over
the other.” See Earth Res. Corp. v. United States, 44 Fed. Cl. 274, 284–87 (1999);
Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 838–39 (Fed. Cir. 1991).

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Snap-On’s relationship with Moli falls well short of this standard. In
2006, after Moli was freed from an exclusivity agreement with Milwaukee,
it contacted Snap-On to sell it battery cells. The two entities worked
together to develop batteries customized for Snap-On’s needs. That
relationship ended around the end of 2012. Their mere contractual
relationship as supplier and purchaser does not establish privity. Without
doubt, Snap-On lacked the type of robust financial control over Moli that
has supported a finding of privity in past cases.
Nor does the record substantiate Plaintiffs’ claim that Snap-On
improperly availed itself of an inventor’s knowledge and assistance in
attacking Plaintiffs’ patents. First, Plaintiffs maintain that Moli and SnapOn set out to create infringing battery cells together, but Snap-On counters
that Moli had a license to do so as part of its 2003 agreement with
Milwaukee. See (Docket #217 ¶ 4). Plaintiffs offer no meaningful dispute, see
(Docket #200 at 11 n.4), and so the development of customized battery packs
for Snap-On does not appear to be problematic.
Second, as noted above, Plaintiffs consider their employees to be the
only inventors. Thus, it makes little sense to accuse Snap-On of borrowing
off of the inventors’ knowledge when former Moli employees like Reid,
Reimers, and von Sacken are, to Plaintiffs, not even to be counted among
them. Moreover, none of these men has held positions of power at Snap-On
or directed the development of infringing products.
At most, it appears each was compensated at standard consultation
rates for testimony about the facts underlying this case, and von Sacken in
particular collected pertinent documents available to him with Moli’s
permission. Plaintiffs have not raised a colorable inference that the
witnesses’ testimony and opinions are the result of collusion. If Plaintiffs
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think they have a claim against Moli for allowing von Sacken to peruse and
copy its documents, see (Docket #230 at 13), they have not asserted it, see
(Docket #224-19 at 5) (PTAB ruling on Plaintiffs’ motion for sanctions,
holding that “even if [Moli] provided Dr. von Sacken with documents that,
in fact, reflected [Milwaukee’s] confidential information, that production
would at most present an apparent breach of duty between [Moli] and
[Milwaukee]”). Further, if Plaintiffs believe that Reid, Reimers, or von
Sacken hold biased opinions, they can explore such matters on crossexamination. Semiconductor Energy Lab. Co., Ltd. v. Yujio Nagata, No. C 11–
02793 CRB, 2012 WL 177557, at *5–6 (N.D. Cal. Jan. 23, 2012). Assignor
estoppel, however, is too blunt an instrument for the situation presented.
Assignor estoppel is a doctrine meant to preserve fairness for the
assignee of patent rights. It does so at the cost of suppressing competition.
Diamond Scientific, 848 F.2d at 1125. It also deprives challengers of access to
relevant evidence. Checkpoint Sys., 412 F.3d at 1337. Mindful of these
competing considerations, the Court finds that, on balance, Plaintiffs’
assignor estoppel defense lacks sufficient basis in the record for a
reasonable jury to conclude that it applies. There is, therefore, no reason to
permit its incorporation into the case, especially in light of the late stage at
which it was asserted and the distinct factual and legal questions such a
defense would raise that are far afield from the patent infringement claims
at issue. The Court will not deny Snap-On’s motion for summary judgment
on this basis, and Plaintiffs’ motion for leave to amend its pleadings will be
denied.
3.2.2

IPR Estoppel

Inter partes review (“IPR”) is a procedure introduced by the AIA in
which the PTAB may review the patentability of one or more claims in a
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patent. See 35 U.S.C. §§ 311–319. A party may request that the PTAB
institute IPR in order to establish that some identified claims are invalid
under Sections 102 or 103. Id. § 311(a)–(b). The petitioner must rely “only
on. . .prior art consisting of patents or printed publications.” Id. § 311(b). If
the PTAB decides to institute IPR, the proceeding is conducted before a
panel of three administrative patent judges. Id. §§ 6(a)–(c), 311. The panel
then issues a decision, after hearing argument from both sides, as to
whether the claims in question are invalid.
IPR was created “to establish a more efficient and streamlined patent
system that will improve patent quality and limit unnecessary and
counterproductive litigation costs” and “to create a timely, cost-effective
alternative to litigation.” Changes to Implement Inter Partes Review
Proceedings, Post–Grant Review Proceedings, and Transitional Program
for Covered Business Method Patents, 77 Fed. Reg. 48680–01 (Aug. 12, 2012)
(codified at 37 C.F.R. §§ 42.100 et seq.). For present purposes, the most
important streamlining effect of IPR is to estop the unsuccessful petitioner
from raising in a later district court action “any ground that the petitioner
raised or reasonably could have raised during that inter partes review.” 35
U.S.C. § 315(e)(2).
Before analyzing which particular grounds are subject to IPR
estoppel in this case, the Court will review the procedural history giving
rise to the estoppel claim. The patents-in-suit have been subjected to three
relevant sets of IPR petitions. First, on January 21, 2015, Chervon N.A., Inc.
(“Chervon”) and others filed IPR petitions seeking to invalidate the patents
as obvious under Section 103(a) based on a proposed combination of prior
art references. On July 31, 2015, the PTAB granted these petitions and

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instituted IPR. A year later, the PTAB issued a final written decision
upholding the patentability of the patents.
Second, on May 6, 2015, Hilti Inc. (“Hilti”) filed a second round of
IPRs against the patents-in-suit. The PTAB instituted these IPRs based on
an obviousness argument under Section 103(a) that relied on a proposed
combination of prior art references that was different than the proposed
combination used in the first set of IPRs. Snap-on joined these IPRs as a copetitioner. Once again, in its final written decision, the PTAB found Hilti
and Snap-on failed to prove any claims were obvious and upheld the
patentability of the patents.
Finally, on May 22, 2015, Snap-on filed a third round of IPRs
challenging the patents as obvious based on different grounds than those
raised in the prior two rounds. The PTAB once again instituted IPRs under
Section 103(a), and once again confirmed the patentability of the patents.
Also pertinent here is Snap-On’s agreement to be bound by the
January 2015 IPRs even though it was not a co-petitioner. On August 5,
2015, Snap-On renewed its motion to stay this litigation. (Docket #35). In
the motion, Snap-on stated: “Although not a co-petitioner on the instituted
IPRs, Snap-on agrees to be precluded in the instant litigation from
challenging the validity of the Patents-In-Suit based on the prior art
combinations in the instituted IPRs, upon issuance of a final written opinion
in those IPRs by the Patent Trial and Appeal Board.” (Docket #36 at 3). On
October 2, 2015, the Court granted the motion and stayed the case pending
resolution of the IPRs, noting that “Snap-On has also agreed to be estopped
in its litigation from asserting the prior art combinations used in the January
2015 IPR petitions after the USPTO issues its final written decisions.”
(Docket #85).
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As noted above, Section 315(e)(2) prohibits an unsuccessful IPR
petitioner from asserting in the district court “that the claim is invalid on
any ground that the petitioner raised or reasonably could have raised
during that inter partes review.” 35 U.S.C. § 315(e)(2). There is one
exception: a petitioner is not estopped from raising in the district court
grounds that it requested be instituted in IPR but upon which the PTAB
declined to institute IPR. Shaw Indus. Group, Inc. v. Automated Creel Sys., Inc.,
817 F.3d 1293, 1300 (Fed. Cir. 2016). This distinction appreciates that IPR
has two phases. First, the petitioner files a petition asserting certain
grounds, and the PTAB decides whether IPR should be instituted on one or
more of those grounds, which in turn requires a finding that there is “a
reasonable likelihood that the petitioner would prevail.” 35 U.S.C. § 314(a).
Only once IPR is instituted upon certain grounds does the PTAB proceed to
decide the merits of the petitioner’s invalidity contentions. See In re Cuozzo
Speed Tech., LLC, 793 F.3d 1268, 1272 (Fed. Cir. 2015). Because a noninstituted ground is not and could not be raised during an IPR proceeding,
Section 315(e)(2) does not bar such a ground from being raised later. Shaw,
817 F.3d at 1300; see also HP Inc. v. MPHJ Tech. Inv., LLC, 817 F.3d 1339, 1347
(Fed. Cir. 2016) (interpreting the analogous estoppel provision that applies
to Patent Office proceedings, Section 315(e)(1), and concluding that
“noninstituted [redundant] grounds do not become a part of the IPR”).
The parties dispute how far this exception goes. Plaintiffs assert that
the exception to IPR estoppel explained in Shaw—non-institution of a
ground for IPR—has two limitations. First, it only applies to non-instituted
grounds when such ground was rejected for purely procedural reasons,
such as redundancy, and not when the ground was refused as insufficient
on its merits to warrant IPR. (Docket #188 at 11). Second, in Plaintiffs’ view,
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estoppel operates to bar any non-petitioned ground that the petitioner had
reasonably available to it, and therefore could have included in its petition,
but chose not to. Id.
Several district courts have accepted Plaintiffs’ position, finding that
while these exceptions to the exception are not totally congruent with the
Federal Circuit’s quite literal reading of the statute in Shaw, they are
important in order to further the efficiency-promoting purposes of IPR and
deter selective presentation of grounds to the PTAB. See Biscotti Inc. v.
Microsoft Corp., Case No. 2:13-CV-01015-JRG-RSP, 2017 WL 2526231, at *7
(E.D. Tex. May 11, 2017); Clearlamp, LLC v. LKQ Corp., No. 12-cv-2533, 2016
WL 4734389, at *8 (N.D. Ill. Mar. 18, 2016). Other courts have hewed to Shaw
and HP’s literal approach, finding that only grounds that were or could
reasonably have been raised during IPR proceedings—that is, after the
PTAB has instituted IPR as to certain grounds—implicate IPR estoppel. See,
e.g., Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 12-cv-5501, 2017 WL
235048, at *3 (N.D. Cal. Jan. 19, 2017) (collecting cases).
The Court finds that, in the absence of greater clarity provided by
the Federal Circuit on these issues, the better view is that recently espoused
by Judge Amy St. Eve in Oil-Dri Corp. of America v. Nestle Purina Petcare Co.,
No. 15-cv-1067, 2017 WL 3278915 (N.D. Ill. Aug. 2, 2017). First, she found
that a plain reading of Shaw compels the conclusion that a non-instituted
ground is not subject to estoppel, whatever the reason for its rejection. Id. at
*4; Douglas Dynamics, LLC v. Meyer Prods. LLC, 14-cv-886-jdp, 2017 WL
1382556, at *5 (W.D. Wis. Apr. 18, 2017) (Shaw “makes the Federal Circuit’s
view of whether § 315(e) estoppel applies to non-instituted grounds crystal
clear”). As she explained, the Federal Circuit has had opportunities to
revisit Shaw’s reasoning and has declined to do so. Oil-Dri, 2017 WL
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3278915, at *4; Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1053
(Fed. Cir. 2017); HP Inc., 817 F.3d at 1347. Further, while it is possible to
draw distinctions between declining to institute IPR for procedural reasons
or for merits-related failings, the fact remains that denial of an IPR petition
is simply not an adjudication of an invalidity contention. Oil-Dri, 2017 WL
3278915, at *4. Holding otherwise would deny the petitioner a full and fair
opportunity to litigate the petitioned but non-instituted ground. See id.;
Verinata, 2017 WL 235048, at *3 (“[L]imiting IPR estoppel to grounds
actually instituted ensures that estoppel applies only to those arguments,
or potential arguments, that received (or reasonably could have received)
proper judicial attention.”). Thus, a petitioned ground for which IPR was
not instituted, for whatever reason, does not give rise to IPR estoppel.
However, the Court is persuaded by Plaintiffs’ other proposed
limitation on the Shaw IPR estoppel exception relating to non-petitioned
grounds. Judge St. Eve also persuasively reasoned in Oil-Dri that “[i]f a
party does not include an invalidity ground in its petition that it reasonably
could have included, it necessarily has not raised a ground that it
‘reasonably could have raised during. . .IPR.’” Oil-Dri, 2017 WL 3278915, at
*8 (quoting 35 U.S.C. § 315(e)(2)). The Federal Circuit has not expressly
considered this particular question, and so Shaw and the cases that follow
it, which touch on non-instituted grounds only, do not foreclose such an
approach. Id. at *7. Moreover, this approach is consistent with the purposes
of the AIA, because it incentivizes petitioners to bring all of their invalidity
claims before the expert judges of the PTAB in the most efficient manner
possible. Id.
Indeed, though Shaw’s plain language prevents IPR estoppel being
applied to non-instituted grounds, the Court can preserve some measure of
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the policy goals animating the creation of IPR by holding that a petitioner
is estopped from asserting invalidity contentions based on prior art that it
could reasonably have included in its IPR petition but did not. See Douglas
Dynamics, 2017 WL 1382556, at *4; Biscotti, 2017 WL 2526231, at *7. As Judge
St. Eve observed, “while it makes sense that noninstituted grounds do not
give rise to estoppel because a petitioner cannot—to no fault of its own—
raise those grounds after the institution decision, when a petitioner simply
does not raise invalidity grounds it reasonably could have raised in an IPR
petition, the situation is different.” Oil-Dri, 2017 WL 3278915, at *8. The
PTAB itself takes this view, too. Great W. Cas. Co. v. Intellectual Ventures II
LLC, IPR No. 2016-01534, Paper No. 13, at 11–14 (PTAB Feb. 15, 2017) (“[A]
petitioner makes an affirmative choice to avail itself of inter partes review
only on certain grounds. That choice, however, comes with consequences,
most prominently, that grounds petitioner elects not to raise in its petition
for inter partes review may be subject to the consequences of Section
315(e)(1).”). In order for IPR to fulfill its mission of streamlining patent
litigation in the district courts and promoting efficient dispute resolution, a
petitioner cannot be left with the option to institute a few grounds for IPR
while holding some others in reserve for a second bite at the invalidity
apple once in the district court. See Cobalt Boats, LLC v. Sea Ray Boats, Inc.,
No. 15cv21, 2017 WL 2605977, at *2–3 (E.D. Va. June 5, 2017) (“[T]he broad
reading of Shaw renders the IPR estoppel provisions essentially
meaningless because parties may pursue two rounds of invalidity
arguments as long as they carefully craft their IPR petition.”); Douglas, 2017
WL 1382556, at *4 (“A patent infringement defendant does not have to take
the IPR option; it can get a full hearing of its validity challenge in district
court. If the defendant pursues the IPR option, it cannot expect to hold a
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second-string invalidity case in reserve in case the IPR does not go
defendant's way.”). “Estopping a party in such a situation is both fair—as
the party could only blame itself—as well as common.” Oil-Dri, 2017 WL
3278915, at *9. Therefore, the Court finds that a petitioner is subject to IPR
estoppel when it fails to raise those grounds that it “reasonably could have
raised” in its IPR petition, which includes prior art that a “‘skilled searcher
conducting a diligent search reasonably could have been expected to
discover.’” Id. (quoting Clearlamp, 2016 WL 4734389, at *7–8); Douglas, 2017
WL 1382556, at *5.
A final point to keep in mind here is the inherently limited scope of
IPR. It can only be instituted on narrow grounds—anticipation and
obviousness on the basis of prior art consisting of patents or printed
publications. 35 U.S.C. § 311(b); Synopsis, Inc. v. Mentor Graphics Corp., 814
F.3d 1309, 1316 (Fed. Cir. 2016). Other types of arguments are in no way
affected by IPR estoppel, since they cannot be raised in such a proceeding.
These include, for example, derivation, inequitable conduct, and any other
purpose for a reference not related to an anticipation or obviousness
defense based on prior art consisting of patents or printed publications. To
the extent any reference mentioned in this Part can be used to support
another ground of relief not available to an IPR petitioner, it can be used for
that purpose. See (Docket #206 at 11); Douglas Dynamics, LLC v. Meyer Prods.
LLC, 14-cv-886-jdp, 2017 WL 2116714, at *2 (W.D. Wis. May 15, 2017)
(explaining confusion as to what qualifies as a “ground” before the PTAB).
The Court does not pass judgment on the merit or admissibility of
the references at issue here for any alternative purposes. Instead, it will
remain focused on the relatively straightforward task at hand: categorizing
the references based on whether they were part of an IPR petition and, if so,
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whether IPR was instituted upon them, or if not, whether they could
reasonably have been included. The Court will not address each reference
in turn, as they too numerous for that sort of treatment. Rather, it will
resolve the parties’ disputes where they arise and let its guidance aid the
parties in determining what is to happen with these references at trial.
First, and easiest, are the references that are not included in Snapon’s experts’ invalidity reports or its summary judgment motion and,
according to Snap-on, “are therefore no longer being relied on by Snap-on
and no longer at issue.” (Docket #206 at 12). The Court need not and does
not opine on whether estoppel bars references which Snap-On has
withdrawn.
Second are those upon which IPR was instituted. See id. at 11. These
are clearly subject to estoppel, notwithstanding Snap-On’s contention that
some of these references continue to be asserted only as an offer of proof in
the event the PTAB’s IPR decisions are overturned on appeal to the Federal
Circuit. The PTAB’s decisions are final unless and until reversed.
Furthermore, any subset or alternative combination of the instituted
references is barred, since such subsets or combinations undoubtedly could
have been raised, but were not, during IPR proceedings. Biscotti, 2017 WL
2526231, at *7–8; Verinata, 2017 WL 235048, at *3. Snap-On does not attempt
to resist this interpretation of the instituted-grounds principle, nor does it
point to any portion of any PTAB decision expressly declining to consider
a subset or alternative combination of references, as was the case in Oil-Dri.
Oil-Dri, 2017 WL 3278915, at *5.15

While subsets and alternative combinations of instituted grounds are
subject to IPR estoppel, the Court appreciates and accepts Snap-On’s position that
to the extent references are being relied upon in combinations that could not have
15

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Third, for the reasons stated above, the Court does not find that IPR
estoppel bars any grounds petitioned but not instituted in the relevant IPRs.
See (Docket #206 at 11). As the Court has explained, a straightforward
application of Shaw, coupled with concerns about giving Snap-On one fair
chance to fully litigate its invalidity contentions, require that estoppel not
reach these grounds, regardless of the PTAB’s reasons for refusing to
institute IPR. Oil-Dri, 2017 WL 3278915, at *4.16
Finally, there are the non-petitioned grounds which Plaintiffs claim
were reasonably available to Snap-On. This includes both (1) additional
grounds for invalidity that could have been asserted based on the
references included in the petition and (2) grounds based on references not
mentioned at all in the IPR petitions. The former are clearly barred, as SnapOn was indisputably in a position to assert all potential arguments based
on a single reference, and its choice to assert some and not others falls
within the scope of IPR estoppel. Douglas, 2017 WL 2116714 at *2 (“[I]f the
new theory relies on different, uncited portions of the prior art, attacks

been raised in an IPR petition—for instance, if some of the instituted references are
now being combined with references that are physical specimens, not printed
publications or patents—those combinations are not barred. See (Docket #216 at
18); Advanced Micro Devices, Inc. v. LG Elec., Inc., Case No. 14-cv-01012-SI, 2017 WL
2774339, at *6 (N.D. Cal. June 26, 2017).
The parties dispute whether each and every Saft reference mentioned by
Snap-On was petitioned and not instituted. See (Docket #212 at 9–10); (Docket
#206-2 at 4–6). Snap-On argues that this is so, on the understanding that anything
petitioned and not instituted will still be available to them. Plaintiffs disagree,
contending that only the reference Medium Prismatic lithium-ion batteries, Saft
Battery Co., Summer ed. 2001, was petitioned. The records from the IPR
proceedings bear out Plaintiffs’ view. See (Docket #191-31, #191-32, #191-33). Thus,
only that lone Saft reference is not estopped by reason of non-institution. Whether
the other Saft references were reasonably available to Snap-On, and therefore
should have been petitioned, is addressed below.
16

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different claim limitations, or relies on substantially different claim
constructions, then the new theory is tantamount to a new invalidity
ground, and the court will treat it like a non-petitioned ground subject to
estoppel.”).17
For the second group—references never used at all in any IPR
petition—Snap-On attempts to justify the fact that these references were not
petitioned on several grounds, including: (1) some are not patents or
printed publications; and (2) some were not “reasonably available” prior to
filing the IPR petitions. (Docket #206 at 11). The Court will evaluate these
contentions below, noting parenthetically that IPR estoppel applies to any
other reference listed in the parties’ charts, see (Docket #206-2), which did
not make its way into an IPR petition and for which Snap-On offers no
excuse or an excuse different from those above. This includes, for example,
the contention that a reference will be used only for “background”
information or that it could be used for another, alternative defense that
could not be raised in IPR proceedings. Those points are what they are, but
the Court is only concerned here with IPR estoppel as to each reference. As
Snap-On itself admits, these references “are not being relied on in
combinations with other references as grounds for invalidity.” (Docket #206
at 18). This makes them irrelevant in the present inquiry.
First, Snap-On is correct that IPR estoppel bars nothing except prior
art consisting of patents and printed publications. The text of Section 311 is
unmistakable: “A petitioner in an inter partes review may request to cancel

This principle works to exclude, for example, reference to Linden, despite
Snap-On’s assertion that it plans to use Linden for a different purpose than that
for which Chervon used it during IPR. See (Docket #212 at 7). Chervon made a
strategic choice to assert certain matters within Linden and Snap-On does not try
to renege on its agreement to be bound thereby.
17

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as unpatentable 1 or more claims of a patent only on a ground that could be
raised under section 102 or 103 and only on the basis of prior art consisting of
patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). Thus,
any other types of prior art references do not qualify. Douglas, 2017 WL
1382556, at *1 n.1.
In this connection, Snap-On wishes to use several physical
specimens of Moli battery cells and packs, as well as battery cells and packs
from other manufacturers. Plaintiffs complain that Snap-On in fact will only
rely on written descriptions of those specimens. (Docket #212 at 10). To the
extent these written materials fall within the scope of Section 311(b), they
are of course affected by IPR estoppel. Snap-On cannot skirt it by
purporting to rely on a device without actually relying on the device itself.
Yet Plaintiffs go further, claiming that even the physical specimens
should be estopped, as a diligent searcher, presented with a particular
physical device, could be expected to locate the underlying printed
publications. The Court is not convinced that the principle of excluding
non-petitioned grounds should be extended so far, given the clear
limitation of Section 311(b) to written materials. Indeed, because of the
potential problems with marking a given device with the applicable patent
numbers, see supra Part 3.1.2, it is not at all clear that Snap-On could be
expected to locate associated printed publications using a physical device.
Thus, the Court concludes that, at least on the facts of this case, Plaintiffs
have not met their burden to show that a skilled searcher’s diligent search
would uncover the underlying printed publications for the physical devices
in question. Clearlamp, 2016 WL 4734389, at *9; Kennedy v. United States, 965
F.2d 413, 417 (7th Cir. 1992) (“The burden of proof is on the party claiming
estoppel.”).
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For the same reasons, the Court finds that IPR estoppel should not
bar assertion of several videos as references. These videos depict the
operation of the Moli prototype packs. First, videos do not have a printed
component and therefore do not qualify under Section 311(b). See Diomed v.
Angio Dynamics, Inc., 450 F. Supp. 2d 130, 142 (D. Mass 2006) (“The
definition of ‘printed’ cannot be stretched to include a presentation which
does not include a paper component or, at minimum, a substitute for paper
such as the static presentation of slides.”) (citing In re Klopfenstein, 380 F.3d
1345 (Fed. Cir. 2004)). Additionally, like the Moli cells, the Court does not
believe that a diligent searcher, faced with the videos, could reasonably be
expected to unearth underlying written materials. Plaintiffs have not
carried their burden to show as much. Clearlamp, 2016 WL 4734389, at *9.
Next, Snap-On wants to use two PowerPoint presentations—the
Bosch 24V Power Tool Presentation and the von Sacken Power 2000
Presentation—because it contends that they were never published or made
public. (Docket #206 at 15). Snap-On argues that no diligent researcher,
including even Cardinal Intellectual Property (“Cardinal IP”), an
intellectual property services company retained by Plaintiffs with searching
capabilities for prior art references, was able to find these presentations.
Plaintiffs note that no search was performed for them because it believed
that Snap-On had actual possession of them prior to the filing of its IPR.
As to the von Sacken presentation, this is true. While Snap-On says
that it did not receive a copy of the presentation until September 2015, it
cites no evidence in support of that belief. (Docket #207 ¶ 24); Fed. R. Civ.
P. 56(c)(1). Moreover, it admits that it received a certain batch of documents
from Plaintiffs in May 2015 that included the presentation. Id. ¶ 9; (Docket
#212 at 7 & n.4). Thus, the Court need not concern itself here with what a
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reasonable search would show; Snap-On had this presentation in time to
include it in the IPR petition.
The result is different for the Bosch presentation, as this was not
produced until October 1, 2015, many months after Snap-On filed its IPR
petition. Even assuming that Snap-On filed the presentation during IPR
proceedings, the inquiry here is whether it had the presentation reasonably
available to it prior to petitioning the PTAB. If Snap-On simply did not have
and could not reasonably have obtained the document before that time, it
cannot be said that they made a strategic choice not to include it in the
petition which should now give rise to estoppel. See Oil-Dri, 2017 WL
3278915, at *9. Given that Plaintiffs produced no evidence of whether a
diligent searcher could locate the Bosch presentation, (Docket #212 at 9 n.9),
the Court finds that IPR estoppel should not apply to it.
Finally, there are several written references that implicate the
reasonableness of Cardinal IP’s searches. First, and easiest, are
Nagyszalaczy and the remaining Saft references, see supra note 16, which
Plaintiffs admit were not found. Given their own failure to locate these
references, the Court cannot say that the evidence shows that Snap-On
should have been able to. On the other hand, Bailey and White were
actually found, but Snap-On says that the searches were unfair, being
crafted with the benefit of hindsight. Snap-On provides no specific evidence
of how the searches were skewed; instead, it proffers only its attorneys’
speculation that things could have been done differently. See (Docket #207
¶¶ 26–27). This is not enough, and the Court finds that these and the other
references Cardinal IP actually located, to the extent they are not estopped
for some other reason, should be subject to IPR estoppel.

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3.2.3

Inequitable Conduct

Plaintiffs next seek dismissal of Snap-On’s inequitable conduct
defense.

Snap-On

has

alleged

that

Plaintiffs

made

material

misrepresentations or omissions to the PTO during prosecution of the ‘290
Patent and its parent patent, and that, as a result, the ‘290 Patent is
unenforceable.
The Court has addressed these contentions before, though in a
slightly different context. In May of this year, in a now-dismissed case
brought by Plaintiffs against another alleged infringer, the Court denied the
defendant’s motion to compel production of documents based on the crimefraud exception to the attorney-client privilege. Milwaukee Elec. Tool Corp. v.
Chervon N.A., Inc., No. 14-cv-1289-JPS, 2017 WL 2312905, at *3 (E.D. Wis.
May 26, 2017). In that motion, the defendant, Chervon, claimed that
Plaintiffs had committed fraud on the PTO during patent prosecution, and
that certain related documents should therefore not be entitled to protection
under the attorney-client privilege. See id. The Court disagreed, finding that
the alleged misstatements and omissions did not rise to the level of
intentional deception. Id.
Though the Court was tasked with applying a different legal
standard in resolving that motion, the operative facts are quite similar to
those presented in this case. In fact, the two bases Snap-On proffers for its
inequitable conduct defense are narrower and more focused than those
proffered by Chervon, and so can be more easily summarized.
The first allegation of misconduct concerns Gary Meyer’s 2009
declaration, discussed above, regarding testing the first Moli prototype
battery packs he received in September 2001. According to Snap-On, while
Meyer submitted some of the data accumulated through his testing to the
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PTO, he omitted other, material portions of it, in order to support his
narrative that the prototypes were failures. For instance, Snap-On accuses
Meyer of providing evidence of the packs’ failure during the demanding
circular saw application while failing to provide data “showing the tool in
operation in less demanding applications like a drill.” (Docket #206 at 20).
Plaintiffs counter that any such data was immaterial in light of the 57 total
pages of testing provided to the PTO during prosecution of the ‘290 Patent.
Further, Meyer purportedly failed to give fulsome descriptions of the tests
in which the packs performed nearly as well as the NiCd packs to which
they were being compared, including the cutting test and pulsed discharge
test. Snap-On alleges a smorgasbord of misstatements and omissions, but
these suffice to give a flavor of their contentions. See (Docket #167 at 21–32);
(Docket #207 ¶ 64).
Further, Meyer purportedly contradicted his own finding that the
packs were failures when he wrote in his October 17, 2001 email that his
second cutting test revealed that the packs “did much better than their
published specification sheet [and] ran some of our tools OK.” (Docket
#209-54 at 2). Meyer concluded that the cells were promising enough that it
was “definitely worth doing some further investigation.” Id. Similarly,
despite the allegation that the packs were failures, Selby wrote an email
stating that the Moli prototype packs “perform outstanding – even in our
toughest application, the circular saw.” (Docket #187-20 at 2). Selby also
noted that the batteries experienced a voltage drop-off when placed in a
“steady laboratory load” at 20 amps, but that when “use[d] in actual
applications, the chemistry of the cell is able to deliver consistent power
output.” Id. Selby also noted that the “‘good’ results so far are with cells that

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are not even built for high power drain,” which gave him “great optimism
for the next samples.” Id.
Selby later explained his enthusiasm at his deposition, noting that at
the time, he though Li-ion batteries were a long way off from being
successful. Thus, he was encouraged to pursue further development in light
of promising early results. In fact, he contended that although the packs
failed the “standard protocol”—the constant-current discharge test—the
other tests, such as the circular saw cutting test, showed promise. (Docket
#203-2 135:22–139:22). His email was written to ensure that the new packs
were not dismissed out of hand.
Shortly after Milwaukee tested the Moli prototype packs, it began
working with Moli to plan additional testing and also made sales
projections based on the potential plan to use Moli battery packs in its
power tools. Milwaukee scheduled a special two-hour meeting for October
31, 2001 of twenty top Milwaukee executives, including Meyer, to discuss
the opportunity for Milwaukee presented by the Moli battery cells. The
meeting notice attached over 50 pages of Moli-generated technical materials
explaining Li-ion battery cells. In a presentation explaining Milwaukee’s Liion battery program, Milwaukee included a slide that displayed the test
results from the original cutting tests performed using the Moli prototype
packs. This slide noted that the “[o]riginal test. . .showed the potential of
the Spinel cell.” (Docket #209-61 at 4).
Additionally, Snap-On claims that Plaintiffs did not explain to the
PTO that the initial Moli prototype packs were known to them to be suited
for low-power applications. They failed to apprise the PTO that the testing
failures could have been due to the lower power of the prototype packs.

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The second aspect of Snap-On’s inequitable conduct theory relates
specifically to the later-developed, higher-power cells Moli provided to
Milwaukee. According to Snap-On, Plaintiffs failed to disclose those
higher-power cells to the PTO although, in Snap-On’s view, they qualified
as prior art under Section 102(f)—the derivation provision already
considered above. The theory here is that although the information and
later prototypes Milwaukee received from Moli were confidential, they
nevertheless can form a part of an obviousness analysis under Section 103.
OddzOn Prods., Inc. v. Just Toys, Inc., 122 F.3d 1396, 1401 (Fed. Cir. 1997).18

In their motion, Plaintiffs proceed through several other allegations of
inequitable conduct that recurred throughout this and related litigation. These
include alleged misstatements by Meyer in a declaration to the PTO in 2007 about
the viability of lithium-ion technology, failure to disclose the Moli prototype packs
in 2007 in connection with prosecution of the ‘585 Patent, and failure by Meyer
and patent prosecution counsel Carlo Cotrone to truthfully and completely
disclose the test results for the prototype packs in 2009, including their purported
misrepresentations about the packs being failures. (Docket #188 at 21–28). Review
of Snap-On’s operative answer reveals that only the final of these grounds is
meaningfully asserted as a basis for its inequitable conduct defense. See (Docket
#167 at 21–32). In its opposition, moreover, Snap-On does not mention the 2007
declaration at all, but focuses on the allegations that Meyer misrepresented his test
results in his 2009 declaration. (Docket #206 at 23–24). Snap-On also adds another
potential ground, as has been noted, regarding failure to disclose the higher-power
Moli cells during patent prosecution. Id.
18

The Court will address only those grounds, as it was Snap-On’s task to
present arguments to preserve this defense, see Gold v. Wolpert, 876 F.2d 1327, 1333
(7th Cir. 1989), and the Court has already found that the allegations not addressed
by Snap-On did not involve material misrepresentations or omissions and were
not made with the intent to deceive, Milwaukee Elec. Tool, 2017 WL 2312905, at *3.
Put briefly, the Court reiterates its earlier finding that “Meyer’s and his colleagues’
beliefs about industry trends and technological development” with respect to Liion batteries “are not facts.” Id. They are, therefore, not capable of being false.
Similarly, the failure to disclose the Moli packs during the ‘800 Application was
premised on voltage differences, and there is insufficient evidence to conclude that
Plaintiffs did not honestly believe that the voltage differences were enough to
warrant nondisclosure. Id. At a minimum, it cannot be said that deceptive intent

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The Court’s prior discovery ruling informs its conclusion that the
inequitable conduct defense cannot proceed on these facts, even when
viewed in the light most favorable to Snap-On. To prevail on this defense,
the accused infringer must prove that the applicant misrepresented or
omitted material information with the specific intent to deceive the PTO.
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1287 (Fed. Cir.
2011). Both elements—intent and materiality—must be proven by clear and
convincing evidence. Id.
Moreover, the requisite intent is difficult to establish; even gross
negligence does not qualify. Kingsdown Med. Consultants, Ltd. v. Hollister
Inc., 863 F.2d 867, 876 (Fed. Cir. 1988). Rather, the accused infringer must
prove by clear and convincing evidence that the applicant knew of the
reference, knew that it was material, and made a deliberate decision to
withhold it. Therasense, 649 F.3d at 1290. And while the requisite intent may
be inferred from circumstantial evidence, this is only permissible where the
specific intent to deceive must be “the single most reasonable inference able
to be drawn from the evidence.” Star Scientific, Inc. v. R.J. Reynolds Tobacco
Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008). Further, the Court of Appeals has
emphasized that “[i]ntent and materiality are separate requirements,” so a
weak showing of intent cannot be salvaged by a strong showing of
materiality, or vice versa. Therasense, 649 F.3d at 1290. Even once the
defendant establishes these elements, the district court must still weigh the
equities to determine whether the applicant’s conduct before the PTO
warrants rendering the entire patent unenforceable. Star, 537 F.3d at 1365.

is “the single most reasonable inference able to be drawn from the evidence” with
respect to these alleged instances of untruthfulness. Star Scientific, Inc. v. R.J.
Reynolds Tobacco Co., 537 F.3d 1357, 1366 (Fed. Cir. 2008).

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The Court must also be mindful that the inequitable conduct defense
is not well-taken by the Court of Appeals. Because of its far-reaching
consequences, it has been called the “‘atomic bomb of patent law.”
Therasense, 649 F.3d at 1289 (quoting Aventis Pharma S.A. v. Amphastar
Pharm., Inc., 525 F.3d 1334, 1349 (Fed. Cir. 2008) (Rader, J., dissenting)). It is
a nearly universal feature of patent litigation, and has been derided as “an
absolute plague,” since “[r]eputable lawyers seem to feel compelled to
make the charge against other reputable lawyers on the slenderest grounds,
to represent their client’s interests adequately[.]” Burlington Indus., Inc. v.
Dayco Corp., 849 F.2d 1418, 1422 (Fed. Cir. 1988).
The first and most glaring problem with Snap-On’s inequitable
conduct defense, as the Court observed in making its discovery ruling, is
that it depends, in large measure, on the Court’s adopting its construction
of the 20 Amp Limitation. Milwaukee Elec. Tool, 2017 WL 2312905, at *5
(“Chervon’s motion boils down to a substantive disagreement with
Plaintiffs about the capabilities of the Moli packs, layered atop a claim
construction dispute.”). That is, in order to find the initial Moli prototypes
were successful, thus rendering Meyer’s statements to the contrary
untruthful, the Court would have to accept Snap-On’s interpretation of the
20 Amp Limitation. Of course, the Court has adopted Plaintiffs’ proposed
construction of that and the other disputed claim terms. This pulls the rug
sharply from underneath Snap-On’s position.19

It must also be appreciated that Snap-On faces a higher burden to prove
inequitable conduct than Chervon did in trying to establish the crime-fraud
exception. The crime-fraud exception required only a prima facie showing of fraud,
whereas the inequitable conduct defense sets a clear-and-convincing standard of
proof. See Avnet, Inc. v. Motio, Inc., Case No. 12 C 2100, 2015 WL 5474435, at *4
(N.D. Ill. Sept. 16, 2015) (explaining the higher burden employed in addressing an
19

Page 72 of 80

From this starting point, the Court will address Snap-On’s theories
of inequitable conduct. First is the claim that Meyer deliberately
misrepresented the results of his testing to the PTO in his 2009 declaration.
This contention is without merit, as it is in reality only Snap-On’s
dissatisfaction with Meyer’s interpretation of the test results. If Meyer did
not explain that the cutting test was the most demanding test performed, it
could have been because he believed—as does the Court after claim
construction—that the packs’ failure on the constant-current discharge test
was enough to render them inadequate. The harshness of the cutting test,
then, makes no difference. The same conclusion justifies his choice to give
short shrift to some information about other tests and testing parameters.
As this Court found once before, “while Meyer may have stated his case
strongly to the Patent Office, there is insufficient evidence to conclude that
he actually misrepresented facts or intended to deceive the patent
examiners.” Milwaukee Elec. Tool, 2017 WL 2312905, at *3. To the extent
Snap-On believes that the second cutting test, performed on October 17,
2001, the driver drill test, or any other test results were withheld, it simply
does not matter, as the constant-current test failure was both a necessary
and sufficient prerequisite for Meyer’s ultimate conclusion. Moreover, it is
undisputed that Meyer provided the constant-current test results in to the
PTO, leaving the patent examiner free to disagree with Meyer’s assessment
of that test.

inequitable conduct defense). Thus, as will become clear below, Snap-On’s attempt
to meet this higher burden using largely the same facts which the Court found
inadequate to support application of the crime-fraud exception is doomed to
failure.

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Nor is there clear and convincing evidence that these statements
were made with the intent to deceive. Snap-On contends that while Meyer
was excited about the prospects of the Moli prototypes in contemporaneous
conversations with his coworkers, his 2009 declaration was gloomy in
outlook. But these two positions are not inconsistent, as Meyer was
permitted some optimism about the future of his work with Moli while still
appreciating that the prototype packs were not the end of the road. His
contemporaneous statements, along with those of his colleagues like Selby,
simply do not lead to the inference of deceptive intent, much less make that
inference the most reasonable one that could be drawn. Therasense, 649 F.3d
at 1290.
Snap-On’s late-coming addition to its inequitable conduct defense—
that Plaintiffs were required to disclose the later-developed Moli cells, but
did not—merits little mention. The Court’s findings as to derivation
establish that the later-developed Moli packs were not prior art under
Section 102(f) and that, concomitantly, there was no material omission in
the failure to disclose them to the PTO. See supra Part 3.1.1. Consequently,
even when the facts are viewed in Snap-On’s favor, the demanding
standards applicable to inequitable conduct require dismissal of this
defense.
3.2.4

Validity

Plaintiffs contend that summary judgment is appropriate on
Defendants’ invalidity defense under 35 U.S.C. § 112. An invalidity defense
must be proved by clear and convincing evidence. Microsoft Corp. v. i4i Ltd.
P’ship, 564 U.S. 91, 95 (2011).
In order to be valid, a patent must satisfy three requirements. First,
the patent must conclude with claims “particularly pointing out and
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distinctly claiming the subject matter which the inventor or a joint inventor
regards as the invention.” 35 U.S.C. § 112. This is the definiteness provision
discussed extensively above in the context of claim construction. As the
Court has explained, “a patent is invalid for indefiniteness if its claims, read
in light of the specification delineating the patent, and the prosecution
history, fail to inform, with reasonable certainty, those skilled in the art
about the scope of the invention.” Nautilus, 134 S. Ct. at 2124 (2014). The
Court has found that the patents-in-suit are not indefinite, see supra Part 2,
and so this requirement is satisfied.
Second, a valid patent must have a sufficient written description,
which demonstrates that the inventors “had possession of the claimed
subject matter as of the filing date.” Ariad Pharma., Inc. v. Eli Lilly and Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010). The focal point of the written
description requirement is whether the inventor actually invented the
invention claimed. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562–63 (Fed.
Cir. 1991). But because of the difficulty in reaching into the inventors’ minds
to learn what they knew, the test is instead “an objective inquiry into the
four corners of the specification from the perspective of a person of ordinary
skill in the art.” Ariad, 598 F.3d at 1351. Evidence from outside the
specification can be relevant for “the level of detail required to satisfy the
written description requirement varies depending on the nature and scope
of the claims and on the complexity and predictability of the relevant
technology.” Id.
Here, the inventors claim “a plurality of. . .battery cells being capable
of producing an average discharge current greater than or equal to
approximately 20 amps,” and the specification provides that “the battery
pack 30 can supply an average discharge current that is equal to or greater
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than approximately 20 A, and can have an ampere-hour capacity of
approximately 3.0 A-h.” (Docket #187-1 at 76–77). These are sufficient
descriptions, notwithstanding the belief of Snap-On’s expert, Quinn Horn,
that the phrase “entire rated capacity” should be present somewhere. See
(Docket #209-2 ¶¶ 107–109). The patent defines the discharge current
required of a pack and the pack’s rated capacity; a skilled artisan would
read these together and conclude that the discharge current is required over
the entire rated capacity of the pack. Snap-On’s half-hearted argument on
this point fails to raise a genuine question as to whether a reasonable jury
could find clear and convincing evidence of the specification’s failure to
inform a skilled artisan that the patentee invented what is claimed. See Univ.
of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 923 (Fed. Cir. 2004).
Finally, a patent must be enabled, meaning that “the specification
must teach those skilled in the art how to make and use the full scope of the
claimed invention without undue experimentation.” PPG Indus., Inc. v.
Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed. Cir. 1996). Unlike the written
description requirement, which requires a fulsome description of all
elements of the claimed invention, the enablement requirement is less
rigorous on the level of completeness required because it operates against
the backdrop of the skilled artisan. That is, because a person of skill in the
art already possesses substantial knowledge about the field, the disclosure
need not explain the practice of the invention from scratch. Falko–Gunter
Falkner v. Inglis, 448 F.3d 1357, 1365 (Fed. Cir. 2006) (“[A] patent need not
teach, and preferably omits, what is well known in the art.”) (quotation
omitted). To be sufficiently enabling, the disclosure need describe only
what is new about the invention in sufficient detail so that one of skill in the
art can combine the disclosure with the knowledge already known in the
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field and have enough information to practice the invention without undue
experimentation. See United States v. Telectronics, Inc., 857 F.2d 778, 785 (Fed.
Cir. 1988).
Plaintiffs have shown that the patents-in-suit are enabled. Snap-On
first alleges that the specification does not explain how to construct a pack
that will enable a 20-amp constant-current discharge over its entire rated
capacity. However, the Court agrees with Plaintiffs that the specification
“guides one of ordinary skill in the art to view the 20 Amp Limitation
consistent with the power requirements that existed at that time for handheld power tools.” (Docket #212 at 12). The exemplar disclosures would
permit a person of ordinary skill in the art to link the discharge current to
the hand-held power tools disclosed. Snap-On cannot meet its burden to
show that “undue experimentation” would be required in this instance.
The more hotly disputed of Snap-On’s non-enablement contentions
is that the specification fails to enable the undefined upper limit of the
asserted claims. (Docket #206 at 28). Here, Snap-On reasons that there is no
enablement when the claims specify 20 amps of discharge current or greater
and do not define the uppermost limit. Id. But whatever the actual upper
limit may be, this claim has not been construed to expressly cover up to an
infinite discharge current. See (Docket #190-40 at 15); MagSil Corp. v. Hitachi
Global Storage Techs., Inc., 687 F.3d 1377, 1381 (Fed. Cir. 2012). Thus, while a
specification “must enable one of ordinary skill in the art to practice the full
scope of the claimed invention,” AK Steel Corp. v. Sollac & Ugine, 344 F.3d
1234, 1244 (Fed. Cir. 2003), Snap-On’s argument fails because it tries to set
up an impossible goal which in reality is not claimed. The skilled artisan
would understand that the nature of the cells would create a natural upper
limit to the potential discharge current, and so disclaiming an infinite
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discharge current would have been unnecessary. Falko–Gunter Falkner, 448
F.3d at 1365. Thus, Snap-On’s non-enablement arguments are without
merit, and, consequently, the Court must dismiss its invalidity defense
under Section 112.
3.2.5

Anticipation

Plaintiffs’ final argument requests a ruling that the 15A Moli
prototype cells provided to Meyer in September 2001, as well as the
improved cells that followed,20 are not anticipatory under 35 U.S.C. § 102(a)
or (b), and that Plaintiffs’ invention was not derived from them under
Section 102(f) or (g).
If the claimed invention was “described in a printed publication”
either before the date of invention, 35 U.S.C. § 102(a), or more than one year
before the U.S. patent application was filed, id. § 102(b), then that prior art
anticipates the patent. To anticipate a claim, a single prior art reference must
expressly or inherently disclose each claim limitation. Celeritas Techs., Ltd.
v. Rockwell Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998). To answer this
question, the Court must consider the prior art against the properly
construed claim terms. Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313,
1335 (Fed. Cir. 2002).
As mentioned several times already, under Section 102(f) a party
must establish that the inventor “did not himself invent the subject matter
sought to be patented[.]” 35 U.S.C. § 102(f). This requires proof of “both

In their motion, Plaintiffs initially sought a ruling only as to the 15A
prototype cells. (Docket #188 at 29–30). Yet Snap-On explained in its opposition
that its anticipation theory includes both those packs and the later Moli cells.
(Docket #206 at 29). Plaintiffs note in reply that their arguments about the failings
of the initial prototypes apply with equal force to the later-developed cells. (Docket
#212 at 18–19). The Court agrees, and its ruling therefore extends to all such cells.
20

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prior conception of the invention by another and communication of that
conception to the patentee.” Creative Compounds, LLC v. Starmark Labs., 651
F.3d 1303, 1313 (Fed. Cir. 2011). To invalidate a claim under 35 U.S.C. §
102(g), a party must show that “before such person’s invention thereof, the
invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it.” 35 U.S.C. § 102(g). Like
derivation, this defense requires a showing of prior conception. Creative
Compounds, LLC, 651 F.3d at 1312. Conception must encompass all
limitations of the claimed invention. Singh, 217 F.3d at 1340.
For reasons already detailed at length in this Order, the Court agrees
with Plaintiffs that the Moli cells—both the initial 15A cells and the laterdeveloped cells—do not anticipate the subject invention, nor was the
invention derived from them. See supra Part 3.1.1. First, Moli’s provision of
battery cells does not constitute a battery pack; the cells are merely a
component part of the ultimate invention and therefore cannot have
disclosed all the limitations of the invention. Second, as explained above,
Milwaukee created the packs and had at least some joint involvement with
Moli in developing the battery cells. Much of Snap-On’s position rests upon
its own preferred construction of the 20 Amp Limitation, see (Docket #206
at 29), and that construction having been rejected, little additional effort
need be expended to dispose of the defense theories that rely upon it. As a
result, Snap-On’s anticipation and derivation defenses based on the Moli
cells will be dismissed.
4.

CONCLUSION
For the reasons stated above, the Court adopts Plaintiffs’ proposed

construction of the disputed claim terms. The Court further finds that SnapOn’s motion for summary judgment should be denied in its entirety, and
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that Plaintiffs’ motion should be denied as to assignor estoppel, granted in
part as to IPR estoppel, and granted in full as to Snap-On’s anticipation,
derivation, invalidity, and inequitable conduct defenses.
Accordingly,
IT IS ORDERED that Plaintiffs’ motion for summary judgment
(Docket #185) be and the same is hereby GRANTED IN PART and
DENIED IN PART as stated herein;
IT IS FURTHER ORDERED that Defendant’s motion for summary
judgment (Docket #183) be and the same is hereby DENIED;
IT IS FURTHER ORDERED that Plaintiffs’ motion for leave to file
its opening claim construction brief (Docket #177) be and the same is hereby
GRANTED;
IT IS FURTHER ORDERED that Plaintiffs’ motion for leave to
amend their answer (Docket #220) be and the same is hereby DENIED; and
IT IS FURTHER ORDERED that the parties’ motions to restrict
certain documents filed in connection with the instant motions (Docket
#176, #180, #181, #198, #204, #211, #215, #219, #222, #229), which were
designated confidential pursuant to the Court’s protective order, be and the
same are hereby GRANTED.
Dated at Milwaukee, Wisconsin, this 22nd day of September, 2017.
BY THE COURT:

____________________________________
J. P. Stadtmueller
U.S. District Court

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