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

Filing 277

ORDER signed by Judge J.P. Stadtmueller on 10/12/2017: Plaintiffs' Motion in Limine No. 12 248 DENIED; Defendant's Motion in Limine No. 2 242 GRANTED; Plaintiffs' Motion in Limine No. 1 238 DENIED in part; Defendant's Motion in Limine No. 1 242 GRANTED in part; and Plaintiffs' Emergency Motion in Limine 264 GRANTED. See Order. (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.
Trial is scheduled to begin on Monday, October 16, 2017. The parties have
filed voluminous motions in limine and Daubert motions in anticipation of
trial. See (Docket #234, #235, #238, #241, #242, #248, #250, #264).
During the final pretrial conference, held on October 10, 2017, the
Court indicated that it would take up each disputed issue before selection
of the jury, or when such matters arose during trial, as appropriate. See
(Docket #271). At the parties’ request, however, the Court now issues a
decision on the most pertinent of the pretrial motions in an effort to
streamline the parties’ trial preparation and perhaps aid their efforts to seek
a mutually agreeable pretrial resolution of this matter. See (Docket #272).
The Court will address each motion in turn.

1.

Moli Evidence as Prior Art for Purposes of Obviousness
Section 102 of the Patent Act establishes certain types of prior art that

may be used in various ways to attack the validity of a patent.1 Section 102(f)
defines one such type of prior art. It provides 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). Put differently, one who derives an
invention from another cannot patent it. Price v. Symsek, 988 F.2d 1187, 1190
(Fed. Cir. 1993). In order to establish derivation, the challenger 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).
“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). A conception must encompass all limitations of the claimed
invention. Id. Critically, “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.” Cumberland Pharm.,
846 F.3d at 1219.
Obviousness, which is a challenge to the validity of a patent made
pursuant to Section 103, is established “if the differences between the

The Leahy-Smith America Invents Act (“AIA”) made significant changes
to the structure of the Patent Act, including Section 102. However, because the
applications resulting in the patents-in-suit were all filed before the AIA’s effective
date, the Court refers to the pre-AIA version of the relevant statutory provisions.
See Eli Lilly & Co. v. Teva Parenteral Meds., Inc., 845 F.3d 1357, 1370 n.8 (Fed. Cir.
2017).
1

Page 2 of 19

subject matter sought to be patented and the prior art are such that the
subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a) (2006). To prove
obviousness, one must show that a skilled artisan “would have found it
obvious to bridge the differences between the subject matter of the claims
and the prior art[.]” Ohio Willow Wood Co. v. Alps S., LLC, 735 F.3d 1333, 1343
(Fed. Cir. 2013). This entails consideration of several factors, including “(1)
the scope and content of the prior art, (2) the differences between the prior
art and the claims at issue, (3) the level of ordinary skill in the art, and (4)
any relevant secondary considerations, such as commercial success, long
felt but unsolved needs, and the failure of others.” Wyers v. Master Lock Co.,
616 F.3d 1231, 1237 (Fed. Cir. 2010); Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
Important here, Section 103 also provides that subject matter defined
in Section 102 may be used to support an obviousness argument although
“the invention is not identically disclosed or described as set forth in section
102.” 35 U.S.C. § 103(a) (2006). In other words, even if a prior art reference
fails to establish that the patent is invalid based on an analysis of Section
102 alone, that prior art may still be used to support a contention that the
invention is obvious under Section 103. See Net MoneyIn, Inc. v. VeriSign,
Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (while a court cannot combine two
prior art references to find anticipation, they can be combined to argue
obviousness); Application of Arkney, 455 F.2d 586, 587 (C.C.P.A. 1972).
In its recent decision on claim construction and summary judgment,
the Court found that certain lithium-ion battery cells manufactured by a
Canadian firm, E-One Moli Energy (Canada) Ltd. (“Moli”), were
Page 3 of 19

insufficient to establish a derivation defense under Section 102(f) for
Defendant Snap-On Incorporated (“Snap-On”). Milwaukee Elec. Tool v. SnapOn Inc., Case No. 14–CV–1296–JPS, 2017 WL 4220457, at *15–17 (E.D. Wis.
Sept. 22, 2017). The Court found that the Moli cells did not constitute a prior
conception of Plaintiffs’ patented invention for two reasons. First, the early
cells were not capable of meeting the 20 Amp Limitation. Id. at *17.2 Second,
the later-developed, more powerful cells were not equivalent to battery
packs, which are the subject of the patents-in-suit. Id.
On this second point, key to the Court’s decision was that, to
establish derivation, the complete and operative invention must be
communicated to the inventor. Id. Rendering the patented invention
obvious is not enough. Id. Applied here, the Court determined that even
assuming a skilled artisan could extrapolate a battery pack from the Moli
cells that would be housed inside it, this would at most render the invention
obvious. Id. The cells were not themselves the complete and operative
invention. Consequently, the Court dismissed Snap-On’s derivation
defense.
Now, Snap-On seeks to use the same Moli evidence to pursue a
different theory of invalidity: that the Moli cells rendered the patented

The central claim construction dispute in this case focused on a limitation
which reads: “the battery cells being capable of producing an average discharge
current greater than or equal to approximately 20 amps.” The Court construed the
claim as follows: “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.” See Milwaukee Elec. Tool,
2017 WL 4220457, at *7–13.
2

Page 4 of 19

invention obvious under Section 103.3 Plaintiffs oppose this, arguing that
the Moli evidence should not be admitted for any purpose. Their opposition
appears to be twofold, but their arguments are not easily parsed. First,
argue Plaintiffs, because the Moli cells do not establish a derivation defense,
they do not qualify as prior art under Section 102(f). As a result, they cannot
now be leveraged in a Section 103 obviousness claim. Second, because
Milwaukee asked Moli to prepare the cells, the cells are part of Milwaukee’s
own

inventive

contributions.

In

Plaintiffs’

view,

they

cannot

simultaneously be prior art.
Snap-On responds that the Court did not grant summary judgment
on its obviousness challenge, only derivation. According to Snap-On, the
Moli cells qualify as Section 102(f) prior art even if they could not sustain a
derivation defense. As Snap-On reads the Court’s recent ruling, the Court
only found that the patented invention was not derived from the cells and
said nothing about whether the cells rendered the packs obvious.

Plaintiffs have asked the Court to prohibit Snap-On from seeking to admit
the Moli cells as anticipatory prior art under Section 102(a) or (b). (Docket #248-2
at 3). During summary judgment, the Court ruled that the cells do not anticipate
the patents under either Section 102(a) or (b). Milwaukee Elec. Tool, 2017 WL
4220457, at *35. Because Snap-On does not contest that ruling and presents only
its Section 103 obviousness theory as a basis for admitting the Moli cells, see
(Docket #246-1 at 21, 23), the Court declines to address these other provisions of
Section 102 further.
3

Additionally, the Court notes that while Plaintiffs’ motion seeks exclusion
of battery cells alone, Snap-On asks for a ruling on the admissibility of other Molirelated materials. See (Docket #246-1 at 14). The Court does not address those other
materials separately, as the parties’ focus is on the battery cells. Without more
specific information about these other Moli materials, the Court can only say that
its ruling about the interaction between Section 102(f) and Section 103 should be
applicable to many types of communications between Moli and Plaintiffs. Further,
those other materials are addressed in other motions in limine, some of which may
be resolved without Court intervention. See (Docket #272).

Page 5 of 19

In light of the statutory text and structure, against the backdrop of
the relevant precedent, the Court finds Snap-On’s position more
persuasive. In OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396, 1403
(Fed. Cir. 1997), the Federal Circuit explained the operation of Section 102(f)
subject matter as used in an obviousness defense:
It means that an invention, A’, that is obvious in view of
subject matter A, derived from another, is also unpatentable.
The obvious invention, A’, may not be unpatentable to the
inventor of A, and it may not be unpatentable to a third party
who did not receive the disclosure of A, but it is unpatentable
to the party who did receive the disclosure.
Id. The court also held that Section 102(f) subject matter, although it
encompasses private communications to the inventor, can nevertheless
constitute prior art for purposes of Section 103. Id. at 1401–02. In this case,
Snap-On’s theory is that Moli communicated its cells, A, to Plaintiffs, and
Plaintiffs then developed their battery pack, A’, from them.
This explanation resolves the first question Plaintiffs raise about how
to define Section 102(f) prior art. Initially, the Court rejects Plaintiffs’ bald
suggestion that any non-public information cannot qualify as prior art. This
is precisely the opposite of what the Federal Circuit said in OddzOn. Id.
Admittedly, most prior art is public information, but the Court of Appeals
found that Section 102(f) subject matter, even if “secret,” could be used in a
Section 103 obviousness claim. Id. Consequently, this Court will not reject
any of the Moli evidence simply because it was non-public, including
drawing distinctions between certain cells that were or were not covered by
a confidentiality agreement between Moli and Plaintiffs. See (Docket #2482 at 5–7).

Page 6 of 19

Another aspect of Plaintiffs’ definitional argument appears to
suggest that only complete inventions, not any communications or
information, can count as Section 102(f) prior art. Yet this position is
inconsistent with a plain reading of OddzOn, which states the Section 102(f)
covers “subject matter,” not only inventions. Id. at 1403. The Court agrees
with Snap-On that whether or not Plaintiffs derived their invention from
Moli’s cells, the cells and related communications and information are of
the Section-102(f) type, having been communicated to the inventor by
another in confidence.
The text of Section 103(a) confirms that even if certain prior art
references fall short of invalidating a patent when considered under the
relevant subsection of Section 102, they nevertheless can be used to make
out an obviousness challenge. Indeed, Plaintiffs’ own cited case, The
Medicines Company v. Mylan Inc., 72 F. Supp. 3d 387, 859–60 (N.D. Ill. 2014),
rev’d on other grounds, 853 F.3d 1296 (Fed. Cir. 2017), recognized that
different standards apply “when a party is attempting to prove invalidity
by derivation under § 102(f)” as opposed to “when a party is attempting to
use the disclosure as prior art under § 102(f) in an obviousness analysis.”
Thus, Plaintiffs are simply wrong to say that since the Court ruled against
Snap-On on derivation, the Moli evidence cannot be used by Snap-on for
any other invalidity theory.
Plaintiffs’ reading of the statute would require Snap-On to first
establish derivation under Section 102(f) before it could use the Moli cells
in a Section 103 obviousness claim. Why would Snap-On do so? Derivation,
if proven, would be enough to invalidate the patents.
A challenger’s ability to repurpose Section 102(f) subject matter that
failed in a derivation attack for a Section 103 obviousness challenge is
Page 7 of 19

consistent with the differing burdens associated with each theory.
Derivation carries a higher burden of proof than obviousness, since
derivation cannot be proven by showing that the purported Section 102(f)
subject matter rendered the invention obvious. Cumberland Pharm., 846 F.3d
at 1219. While the fact that the Moli cells did not encompass every limitation
of the patent claims was fatal to Snap-On’s derivation argument, it is not
fatal to their use in an obviousness defense. The amount of incongruity
between the cells and the packs—between subject matter A and invention
A’—is part and parcel of the parties’ fact-intensive competing arguments as
to whether A rendered A’ obvious. See Wyers, 616 F.3d at 1237. It does not
render A inadmissible.
To the extent Plaintiffs believe that the Court made a broader ruling
on summary judgment than simply rejecting Snap-On’s derivation
contention, they are mistaken. The Court did state that its “findings as to
derivation establish that the later-developed Moli packs were not prior art
under Section 102(f)[].” Milwaukee Elec. Tool, 2017 WL 4220457, at *33. But
Plaintiffs cherry-picked this single clause from a longer sentence within the
Court’s analysis of Snap-On’s inequitable conduct claim. See id. In this
statement, the Court was merely reiterating that Snap-On’s derivation
argument did not hold water, not that the Moli cells were outside the type
of subject matter contemplated in Section 102(f). Plaintiffs provide little
argument on this point other than to repeatedly cite this single portion of
the Court’s earlier decision.
Additionally, as to Plaintiffs’ claim that the cells are part of their own
inventive work, it is not clear that they should be excluded from
consideration on that basis. First, Section 102(f) subject matter undoubtedly
includes any private communications to the inventor. OddzOn, 122 F.3d at
Page 8 of 19

1401–02. Second, Section 103(c) expressly provides situations in which
Section 102(f) subject matter may not be used in a Section 103 obviousness
argument. See 35 U.S.C. § 103(c) (2006). The first exception arises in
employer-employee situations, and the second applies to joint research
agreements. Id. Milwaukee does not dispute that the Moli evidence does
not fall within either exception, as Moli was not its employee and it did not
execute a joint research agreement with Moli.
In its summary judgment decision, the Court observed that “[t]o 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).”
Milwaukee Elec. Tool, 2017 WL 4220457, at *17. Thus, while the record on
summary judgment disclosed that “Moli was a supplier of a component
part of the invention working at the direction of the true inventors—
Milwaukee,” id., the Court’s point was that Snap-On failed to meet the high
bar required to prove derivation. Here again, Plaintiffs read the Court’s
decision through a rose-colored lens.
For the reasons stated above, the Court finds that although the Moli
cells and related evidence do not establish derivation, they nevertheless
may be deployed in the context of a Section 103 obviousness claim.
2.

Inter Partes Review and Reexaminations
The parties’ next dispute relates to the admissibility of evidence

regarding the many post-issuance proceedings that have been instituted
concerning the patents-in-suit, including reexaminations and inter partes
review (“IPR”) proceedings. None of the twenty such proceedings has
resulted in invalidation of the patents, and Plaintiffs understandably want
to explain that fact to the jury.
Page 9 of 19

The Court’s decision here ties in closely with its summary judgment
ruling on the estoppel effect of the IPR proceedings. As the Court has noted,
IPR is “a procedure introduced by the AIA in which the [Patent Trial and
Appeal Board (“PTAB”)] may review the patentability of one or more
claims in a patent.” Milwaukee Elec. Tool, 2017 WL 4220457, at *24 (citing 35
U.S.C. §§ 311–319). However, the grounds for an IPR challenge are limited
to anticipation and obviousness claims based on “prior art consisting of
patents or printed publications.” 35 U.S.C. § 311(b). 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.). IPR estoppel promotes the goal of efficiency by barring an
IPR 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).
The contours of IPR estoppel are hard to define, and the Court will
not rehash its analysis of those issues. It is enough to summarize the Court’s
findings. First, any ground Snap-On did not include in an IPR petition but
reasonably could have is barred. Milwaukee Elec. Tool, 2017 WL 4220457, at
*26. Second, any ground petitioned but for which the PTAB did not institute
review—for any reason whatsoever—is not barred. Shaw Indus. Group, Inc.
v. Automated Creel Sys., Inc., 817 F.3d 1293, 1300 (Fed. Cir. 2016). Third, any
ground petitioned and for which IPR was instituted is barred. Milwaukee
Elec. Tool, 2017 WL 4220457, at *25.
Page 10 of 19

The Court applied these principles to many potential prior art
references, finding that some were subject to IPR estoppel while others
were not. The exact decisions are unimportant for present purposes. What
matters here is whether, having applied IPR estoppel to exclude some prior
art references from the case, it is appropriate to discuss the IPRs before the
jury.
Plaintiffs contend that the PTAB’s decisions upholding their patents
against IPR challenges are relevant to opposing Snap-On’s invalidity
contentions, showing that Snap-On is rehashing lost arguments, and
providing context for the third-party license agreements it will use to prove
its damages. Snap-On counters that the IPR proceedings are irrelevant
because IPR estoppel leads to the exclusion of any grounds ruled upon by
the PTAB. Thus, the prior art references presented to the jury in this case
must necessarily be different from those considered by the PTAB. Further,
says Snap-On, explaining the IPR process, the relevant legal standards, the
evidence the PTAB considered in each IPR proceeding, and the outcomes
in each proceeding will be a waste of time that will confuse the jury as to
the standards applicable in this case and mislead them into unnecessarily
deferring to the PTAB on validity matters.
The Court agrees with Snap-On here. Because of the effect of IPR
estoppel, the IPRs necessarily covered different prior art than will be used
at trial. Whether that prior art was sufficient to invalidate the patents, as a
general proposition, is irrelevant to the specific prior art at issue here. For
that reason, admitting evidence of the IPRs is likely to mislead the jury into
believing that because the patents-in-suit have survived many attacks, they
must be valid against the present attacks.

Page 11 of 19

In this respect, the Court respectfully disagrees with StoneEagle
Servs., Inc. v. Pay-Plus Solutions, Inc., No. 8:13–cv–2240–T–33MAP, 2015 WL
3824208, at *9 (M.D. Fla. June 19, 2015), upon which Plaintiffs principally
rely. In this Court’s view, even if the potentially different legal standards
between the IPRs and this case may be explained through jury instructions,
it is more important to appreciate that the prior art is different. This means
that the IPRs would only ever be relevant for the broad notion that the
patents are resilient, but such a proposition is misleading and unhelpful.
See Wis. Alumni Res. Found. v. Apple, Inc., 135 F. Supp. 3d 865, 874 (W.D. Wis.
2015).
Moreover, to the extent that IPR estoppel does not apply, such as for
references petitioned but not instituted, there is no reason to show the jury
that IPR was not instituted because the Federal Circuit has instructed that
it does not matter the reason for the decision not to institute IPR. See
Interdigital Comm’ns Inc. v. Nokia Corp., C.A. No. 13–10–RGA, 2014 WL
8104167, at *1 (D. Del. Sept. 19, 2014). Thus, while Plaintiffs would like to
argue to the jury that the Saft prior art was petitioned but not instituted by
the PTAB, thereby suggesting it is inferior as prior art, see (Docket #238 at
3), this runs directly afoul of the Federal Circuit’s views on IPR estoppel.
Snap-On is allowed to rely on the Saft prior art and other petitioned but
non-instituted grounds, and the PTAB’s decision not to undertake a merits
review of such grounds during IPR is immaterial. Similarly, while Plaintiffs
are correct that some Moli prior art was submitted in connection with the
IPRs, it cannot point to a decision instituting review thereon or a merits
decision upholding patentability in the face of the Moli prior art. Simply
being mentioned during IPR proceedings does not give rise to IPR estoppel,

Page 12 of 19

and consequently a review of the IPR proceedings would not be needed to
provide context for that prior art.
Equally important to this Court’s analysis is the potential waste of
time and resources explaining and perhaps re-arguing the IPR proceedings.
IPR estoppel is designed to streamline district court litigation and prevent
revisiting certain validity arguments on which a defendant has already
received a considered decision on the merits. See Wis. Alumni Research
Found., 135 F. Supp. 3d at 874. Introducing the jury to the several series of
IPR proceedings at issue here, explaining to them the evidence considered
and the role of the PTAB, and discussing the outcomes of those
proceedings, will consume enormous amounts of time. Indeed, as Snap-On
points out,
[b]oth parties could cherry-pick statements and findings from
the PTAB or examiners to support their case. On one hand,
MET might try to suggest that the patents have survived
many challenges before the Patent Office, which it would
argue tends to indicate that the patents are valid. By the
nature of the references, however, this trial is the first time
that a particular prior art device, video, or 102(f) prior art
could have been addressed, and any contrary suggestion
would be misleading. On the other hand, Snap-on could point
to the multiple times that a board of experienced patent
lawyers indicated that a petitioner had shown a reasonable
likelihood that they would succeed in showing that the
patents are invalid. Or, Snap-on could present evidence
relating to inter partes reexamination No. 95/001,848, where
the examiner repeatedly rejected the claims of the ‘290 patent,
requiring MET to appeal the decision. When MET convinced
the patent challenger not to file an appeal brief, the Examiner
noted that no respondent appellate brief was filed and
reversed his rejection.

Page 13 of 19

(Docket #246-1 at 8–9). Against this looming danger of misleading tangents
into prior proceedings, the Court finds little probative value rests on the
other end of the scale. Thus, whether it is Plaintiffs’ desire to provide
context for its claims or prove validity by reference to irrelevant prior art,
the Court’s duty to ensure that the jury’s time is used efficiently counsels
against admission of the IPR proceedings. See Magna Elec., Inc. v. TRW Auto.
Holdings Corp., No. 1:12-cv-654, 2016 WL 4238769, at *2 (W.D. Mich. Jan. 28,
2016).
The

Court’s

concerns

are

not

assuaged

by

Plaintiffs’

counterarguments. First, Plaintiffs posit that courts normally exclude
evidence of IPR proceedings when they are non-dispositive or when they
are ongoing, whereas here the IPRs have all been completed and resulted
in decisions on the merits upholding patentability. Second, Plaintiffs
contend that Snap-On’s fears about the differing legal standards makes
little sense, since the burden it faced during IPR was lower than its burden
here. Yet these contentions do not address the Court’s belief that discussing
IPR proceedings will result in an unnecessary expenditure of time
dedicated to explaining how decisions were rendered on prior art
references not at issue here. To the extent Plaintiffs want to show that SnapOn is making the same arguments about different prior art, (Docket #238 at
4, 7–8), cross-examination and impeachment should be sufficient without
going into the entirety of the IPR proceedings. Moreover, to the extent
Plaintiffs want to show that Snap-On lost on claim construction or other
purely legal arguments before the PTAB, those are irrelevant to the jury’s
factfinding role. See Magna, 2016 WL 4238769, at *2.
Likewise, the Court is not convinced that evidence of IPR
proceedings should be introduced simply because the Federal Circuit has
Page 14 of 19

held that “it may be harder to meet the clear and convincing burden when
the invalidity contention is based upon the same argument on the same
reference that the PTO already considered.” Sciele Pharma Inc. v. Lupin Ltd.,
684 F.3d 1253, 1260 (Fed. Cir. 2012). First, Sciele concerned instructing the
jury regarding the clear and convincing standard required for invalidity
claims. It made no mention of the admissibility of evidence regarding IPR
proceedings. Second, excluding evidence related to IPR proceedings is not
inconsistent with Sciele, as none of Snap-On’s trial arguments will be based
on the same references that the PTAB considered. This is the effect and
purpose of IPR estoppel. Sciele makes sense when one speaks of references
that the Patent and Trademark Office considered during prosecution, but it
does not correlate with IPR proceedings. Again, if Plaintiffs want to argue
that Snap-On has made similar legal arguments for invalidity before and
lost, this would lead the jury down a long and potentially misleading
garden path.
Federal Rule of Evidence 403 therefore obliges the Court broadly
exclude evidence related to the IPR proceedings and reexaminations. Fed.
R. Evid. 403; Magna, 2016 WL 4238769, at *2. Subject to whatever other
stipulations the parties may agree upon, the Court finds that “[t]he parties
may. . .use as evidence statements made or evidence proffered during the
[post-issuance proceedings] so long as this is done without referencing
either the [proceedings] or the outcomes.” Personalized User Model, L.L.P. v.
Google Inc., C.A. No. 09–525–LPS, 2014 WL 807736, at *3 (D. Del. Feb. 27,
2014). The only caveat must be that to the extent an examiner on
reexamination looked at the same prior art being raised here, it is relevant
that the examiner did not invalidate the patent on that ground. See Microsoft
Corp. v. i4i Ltd. P’ship, 564. U.S. 91, 111 (2011); Sciele, 684 F.3d at 1260; Oracle
Page 15 of 19

Am., Inc. v. Google Inc., No. C 10–03561 WHA, 2012 WL 1189898, at *3 (N.D.
Cal. Jan. 4, 2012). Of course, no such thing can arise in this case from the IPR
proceedings, since as has been explained at length, there should be no
overlap in the prior art references presented to the jury in this case and
those reviewed during IPR.
3.

Plaintiffs’ Motion to Exclude Snap-On’s Previously Undisclosed
Non-Infringement Argument
During claim construction, Snap-On proffered that the only way to

test the 20 Amp Limitation, see supra note 2, was to apply real-world
conditions, i.e., attaching a battery pack to a tool and using the tool to
perform a task like cutting or drilling. Milwaukee Elec. Tool, 2017 WL
4220457, at *9. The Court disagreed, finding 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.” Id.
Plaintiffs’ emergency motion in limine, (Docket #264), alleges that
Snap-On’s expert, Quinn Horn (“Horn”), plans to argue at trial that
infringement must be tested by attaching a battery pack to a tool, in
contravention of the Court’s claim construction.4 Horn will opine that
because Snap-On’s tools are uniquely designed with electronics, such as

Plaintiffs also complain that Horn’s opinion on this topic was disclosed
only recently, but Snap-On has proffered enough evidence to convince the Court
that this opinion was timely disclosed and that Plaintiffs deposed Horn regarding
it. See (Docket #268 at 2–3). Indeed, Plaintiffs raised a nearly identical argument in
their Daubert motion related to Horn and did not there contend that his opinion
on the matter was not timely disclosed. See (Docket #234 at 8–12).
4

Page 16 of 19

protection circuitry, built into a tool, the accompanying battery packs
cannot be properly tested unless connected to a Snap-On tool. (Docket #258
at 11–13). He claims that this invalidates the testing done by Plaintiffs’
expert, Mark Ehsani (“Ehsani”), on the battery packs, as that testing
bypassed the tool’s electronics. Id. Snap-On’s criticism, then, is that
Plaintiffs’ testing was done under “unusual conditions” and represents a
calculated effort to find infringement. Id.5
The Court finds Snap-On’s position violative of at least the spirit, if
not the letter, of the Court’s claim construction ruling. The Court has said
that the 20 Amp Limitation tests the capability of a battery pack, untethered
from use with an actual tool. Horn could have run tests consistent with that
construction of the claim, which was itself consistent with the construction
given to the 20 Amp Limitation by every prior adjudicative body to
consider it. See Milwaukee Elec. Tool, 2017 WL 4220457, at *7. He did not, but
that oversight is no reason to permit Snap-On an eleventh-hour amendment
of its theory of the case.
Nor is the Court convinced that Ehsani’s testing was unusual. In
Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343–44 (Fed. Cir. 2001), the
court found that a patent claim dependent on the automatic operations of a
computer could not be reliably tested using a method that disabled those
automatic operations. By contrast, in Finjan, Inc. v. Secure Computing Corp.,
626 F.3d 1197 (Fed. Cir. 2010), the court concluded that “to infringe a claim

Additionally, Horn will contend that even if infringement can be found
based on Ehsani’s testing, damages should be diminished because it is simply not
realistic for anyone to run a battery pack in the way Plaintiffs propose. (Docket
#268 at 2). Snap-On reports that after conferring with Plaintiffs, it appears that
Plaintiffs do not seek to exclude this testimony for that purpose. The Court
therefore declines to address its admissibility on that ground.
5

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that recites capability and not actual operation, an accused device ‘need
only be capable of operating’ in the described mode.” Id. at 1204 (quoting
Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991)). In
that case, the court determined that even if infringing software features
were “locked” when the software was sold, infringement could still be
found. Id. The court observed that “software for performing the claimed
functions existed in the products when sold—in the same way that an
automobile engine for propulsion exists in a car even when the car is turned
off.” Id. at 1205.
The matter of appropriate testing is context-driven, and thus there is
no merit Snap-On’s claim that unusual testing conditions are always a
matter to be explored with the jury. Rather, in this case Ehsani appears to
have tested Snap-On’s battery packs without modification, whatever SnapOn might believe about their integration with some tool down the line. See
High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551,
1555–56 (Fed. Cir. 1995) (a patentee cannot show infringement by testing a
product that was not assembled according to its instructions).
It must be remembered that the relevant claim pertains to battery
packs, not tools. Thus, while some of the patents-in-suit contain claims
relating to tools and their operability with battery packs, the 20 Amp
Limitation falls within a claim about the capabilities of a battery pack. See
(Docket #273 at 4). Moreover, the tool claims, such as they are, only require
that a tool be “operable for use with the battery pack,” id., not that the tool
and pack operated together satisfy the pack-specific claims. Thus, the Court
is obliged to grant Plaintiffs’ motion and exclude at least the portions of
Horn’s opinions on infringement that rely upon connecting the battery
packs to tools, as expert testimony that is at odds with the Court’s claim
Page 18 of 19

construction will undoubtedly serve only to confuse, not aid, the jury. See
Fed. R. Evid. 702; PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1246 (Fed.
Cir. 2002).
4.

Conclusion
For the reasons stated above, the Court will permit Snap-On to

proffer Moli-related evidence as part of a Section 103 obviousness
contention, will exclude evidence concerning the reexaminations and IPRs
except in limited circumstances, and will preclude Horn from offering an
infringement opinion that depends on connecting the battery pack to a tool.
Accordingly,
IT IS ORDERED that Plaintiffs’ motion in limine No. 12 (Docket
#248-2) be and the same is hereby DENIED;
IT IS FURTHER ORDERED that Snap-On’s motion in limine No. 2
(Docket #242) be and the same is hereby GRANTED;
IT IS FURTHER ORDERED that Plaintiffs’ motion in limine No. 1
(Docket #238) be and the same is hereby DENIED in part as stated herein;
IT IS FURTHER ORDERED that Snap-On’s motion in limine No. 1
(Docket #242) be and the same is hereby GRANTED in part as stated
herein; and
IT IS FURTHER ORDERED that Plaintiffs’ emergency motion in
limine (Docket #264) be and the same is hereby GRANTED.
Dated at Milwaukee, Wisconsin, this 12th day of October, 2017.
BY THE COURT:

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