`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`Petitioner,
`
`v.
`
`BLACK & DECKER INC.,
`Patent Owner.
`Case No. PGR2020-00007
`
`Patent No. 10,389,139
`______________
`
`PETITION FOR POST-GRANT REVIEW OF
`U.S. PATENT NO. 10,389,139 (CLAIMS 11-13)
`
`
`
`
`
`
`
`
`
`
`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`
`V.
`
`Table of Contents
`PETITIONER’S EXHIBIT LIST ........................................................................... III
`I.
`INTRODUCTION .......................................................................................... 1
`II. MANDATORY NOTICES ............................................................................ 1
`A.
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1)) ................................. 1
`B.
`Related Matters (37 C.F.R. § 42.8(b)(2)) ............................................. 1
`C.
`Counsel (37 C.F.R. § 42.8(b)(3)) and Service Information (37
`C.F.R. § 42.8(b)(3)-(4)) ........................................................................ 1
`III. CERTIFICATION AND FEES ...................................................................... 2
`IV.
`IDENTIFICATION OF CLAIMS AND GROUNDS .................................... 2
`A. Overview of Grounds and Claims Challenged..................................... 2
`B.
`Fry Qualifies as Prior Art under 35 U.S.C. § 102(a)(2) ....................... 4
`BACKGROUND .......................................................................................... 14
`A.
`Brief Overview of The ’139 Patent .................................................... 14
`B.
`Summary of Prosecution History of the ’139 Patent ......................... 17
`C.
`Cited References ................................................................................. 20
`Zick .......................................................................................... 21
`
`Fry ............................................................................................ 24
`
`Yeh ........................................................................................... 26
`
`VI. LEVEL OF ORDINARY SKILL ................................................................. 30
`VII. CLAIM CONSTRUCTION ......................................................................... 30
`VIII. ARGUMENT – CLAIMS 11-13 ARE UNPATENTABLE ........................ 31
`A. Ground #1: Zick Anticipates Claims 11-13 ....................................... 31
`Claim 11 ................................................................................... 31
`
`Claim 12 ................................................................................... 54
`
`Claim 13 ................................................................................... 59
`
`Ground #2: Zick Renders Claims 11-13 Obvious .............................. 60
`Claim 11 is at least obvious in view of Zick............................ 61
`
`Claim 12 is at least obvious in view of Zick............................ 64
`
`
`B.
`
`
`
`i
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`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`C.
`
`Claim 13 is at least obvious in view of Zick............................ 65
`
` Motivation to Combine Constructions in Zick ........................ 66
`Ground #3: Fry’s First Embodiment Depicted in Fry’s Figures
`1-13 Anticipates Claims 11-13 ........................................................... 67
`Claim 11 ................................................................................... 68
`
`Claim 12 ................................................................................... 87
`
`Claim 13 ................................................................................... 90
`
`D. Ground #4: Yeh Anticipates Claims 11-13 ........................................ 91
`Claim 11 ................................................................................... 91
`
`Claim 12 ................................................................................. 109
`
`Claim 13 ................................................................................. 112
`
`IX. CONCLUSION ........................................................................................... 113
`LISTING OF CHALLENGED CLAIMS (37 C.F.R. § 42.24(A)(1)) .................. 114
`CERTIFICATION OF COMPLIANCE WITH TYPE-VOLUME LIMITS ........ 115
`CERTIFICATE OF SERVICE ............................................................................. 116
`
`
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`- ii -
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`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`PETITIONER’S EXHIBIT LIST
`
`Description
`U.S. Patent No. 10,389,139 to Velderman et al. (the “’139
`patent”)
`File Wrapper for the ’139 patent
`Declaration of Dr. Marc Herniter
`Curriculum Vitae of Dr. Marc Herniter
`U.S. Patent No. 8,203,307 to Zick et al. (“Zick”)
`U.S. Patent No. 10,044,197 to Fry et al. (“Fry”)
`File Wrapper for U.S. Provisional Application No.
`61/915,483 (Fry claims priority to this provisional)
`File Wrapper for U.S. Provisional Application No.
`61/944,819 (Fry claims priority to this provisional)
`File Wrapper for Fry
`U.S. Patent Application Publication No. US 2008/0116748
`to Yeh (“Yeh”)
`Reserved
`Reserved
`File Wrapper for U.S. Provisional Application No.
`62/099,614 (the ’139 Patent claims priority to this
`provisional)
`File Wrapper for U.S. Provisional Application No.
`62/060,305 (the ’139 Patent claims priority to this
`provisional)
`
`Exhibit
`
`Ex. 1001
`
`Ex. 1002
`Ex. 1003
`Ex. 1004
`Ex. 1005
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`
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`- iii -
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`

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`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`U.S. Patent Application Serial No. 12/917,128 (purportedly
`incorporated-by-reference into the ’139 Patent)
`U.S. Patent Application Serial No. 12/037,290 (purportedly
`incorporated-by-reference into the ’139 Patent)
`U.S. Provisional Application No. 60/891,540 (purportedly
`incorporated-by-reference into the ’139 Patent)
`U.S. Patent Application Serial No. 14/715,258 (purportedly
`incorporated-by-reference into the ’139 Patent)
`U.S. Patent No. 6,104,162 to Sainsbury et al. (“Sainsbury”) ,
`which was applied to reject claims of the ’139 Patent during
`prosecution
`U.S. Patent No. 6,528,970 to Liu et al. (“Liu”), which was
`applied to reject claims of the ’139 Patent during prosecution
`Filings of 5 February 2019 in EP Application 15849258.7
`European Search Opinion in EP Application 15849258.7
`U.S. Patent No. 6,211,652, which is incorporated by
`reference in Fry
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`Ex. 1022
`
`Ex. 1023
`
`
`
`- iv -
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`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`INTRODUCTION
`Petitioner requests Post-Grant Review (“PGR”) of claims 11-13 (the
`
`I.
`
`“Challenged Claims”) of U.S. Patent No. 10,389,139 (the “’139 patent”). The
`
`Board should institute trial and cancel the Challenged Claims.
`
`II. MANDATORY NOTICES
`A. Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`The Petitioner in this proceeding is Milwaukee Electric Tool Corporation
`
`(“Petitioner”). There are no other real parties-in-interest.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`Petitioner identifies U.S. Patent Application Serial Nos. 16/250,857,
`
`14/869,297, PCT/US15/54262, and 16/544,459 as related administrative matters.
`
`The ’139 Patent and each of these applications claim priority to U.S. Provisional
`
`Application No. 62/060,305 (Ex. 1014). Both the ’139 Patent and
`
`PCT/US15/54262 and U.S. Patent Application Serial No. 16/544,549 also claim
`
`priority to U.S. Provisional Application No. 62/099,614 (Ex. 1013).
`
`No other judicial or administrative matters are currently known to Petitioner
`
`that would affect, or be affected by, a decision in this proceeding.
`
`C. Counsel (37 C.F.R. § 42.8(b)(3)) and Service Information (37
`C.F.R. § 42.8(b)(3)-(4))
`Petitioner designates Dion M. Bregman (Reg. No. 45,645) as lead counsel
`
`for this matter, and designates Jason C. White (Reg. No. 42,223), and Alexander B.
`
`
`
`1
`
`

`

`Stein (Reg. No. 71,397) as back-up counsel for this matter.
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Postal mailings and hand deliveries for lead and back-up counsel should be
`
`addressed to: Morgan, Lewis & Bockius LLP, 1400 Page Mill Road, Palo Alto,
`
`CA, 94304. (Telephone: 650.843.4000; Fax: 650.843.4001).
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), Petitioner consents to e-mail service at:
`
`Metco-139Patent-PGR@morganlewis.com.
`
`For compliance with 37 C.F.R. § 42.10(b), a Power of Attorney is filed
`
`concurrently herewith.
`
`III. CERTIFICATION AND FEES
`Petitioner certifies that the ’139 Patent is available for PGR as this Petition is
`
`filed within nine months of the issue date of the ’139 Patent (i.e., August 20,
`
`2019). Petitioner also certifies that it is not barred or estopped from requesting this
`
`PGR.
`
`Fees should be charged to Deposit Account No. 50-0310 (Order No.
`
`010768-8000).
`
`IV.
`
`IDENTIFICATION OF CLAIMS AND GROUNDS
`A. Overview of Grounds and Claims Challenged
`This Petition relies on the prior art identified below, none of which was
`
`previously considered by the USPTO. This Petition also relies on an expert
`
`declaration from Dr. Marc Herniter, a professor of electrical and computer
`
`
`
`2
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`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`engineering, who has decades of industry and academic experience related to
`
`power electronics. See Ex. 1003 at ¶¶ 6-10; see also Ex. 1004.
`
`• Zick (Ex. 1005). Zick is a U.S. patent that published on June 19, 2012,
`
`which is more than one year before the effective filing date (October 6,
`
`2014) of the ’139 patent. Thus, Zick qualifies as prior art under at least
`
`§ 102(a)(1).
`
`• Fry (Ex. 1006). Fry is a U.S. patent that claims priority to U.S.
`
`Provisional Application No. 61/915,483, filed on December 12, 2013
`
`(the “’483 provisional”), and U.S. Provisional Application No.
`
`61/944,819, filed February 26, 2014 (the “’819 Provisional”). As
`
`demonstrated below, Fry was effectively filed as of February 26, 2014
`
`(filing date of the ’819 Provisional), which is before the effective filing
`
`date of the ’139 patent (October 6, 2014). Infra Section B. Fry thus
`
`qualifies as prior art under § 102(a)(2).
`
`• Yeh (Ex. 1010). Yeh published on May 22, 2008 (more than one year
`
`before the effective filing date of the ’139 patent), thereby qualifying as
`
`prior art under at least § 102(a)(1).
`
`The above-identified prior art renders the Challenged Claims unpatentable
`
`based on the following grounds:
`
`3
`
`

`

`Ground
`
`Statutory Basis and Art Cited
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Claims Challenged
`
`1
`
`2
`
`3
`
`4
`
`Anticipated by Zick pursuant to §§ 102(a)(1)
`and (a)(2)
`
`Obvious over Zick pursuant to § 103
`
`Anticipated by Fry’s First Embodiment
`pursuant to § 102(a)(2)
`
`Anticipated by Yeh pursuant to §§ 102(a)(1)
`and (a)(2)
`
`11-13
`
`11-13
`
`11-13
`
`11-13
`
`
`Fry Qualifies as Prior Art under 35 U.S.C. § 102(a)(2)
`B.
`Fry is a U.S. patent that issued from an application filed on December 12,
`
`2014, which application claims priority to two provisional applications—one filed
`
`on December 12, 2013 (U.S. Provisional Application Serial No. 61/915,483; the
`
`“’483 Provisional”) and another filed on February 26, 2014 (U.S. Provisional
`
`Application Serial No. 61/944,819; the “’819 Provisional”). Fry qualifies as prior
`
`art to the ’139 Patent under 35 U.S.C. § 102(a)(2) because it “is entitled to claim a
`
`right of priority” to the ’819 Provisional.
`
`A patent is entitled to claim a right of priority to a provisional application if
`
`the invalidating disclosure is in the provisional, and if the provisional fulfills the
`
`ministerial requirements of “(1) containing a priority or benefit claim to the prior-
`
`filed application; (2) being filed within the applicable filing period requirement
`
`
`
`4
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`

`

`(copending with or within twelve months of the earlier filing, as applicable); and
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`(3) having a common inventor or being by the same applicant.” MPEP
`
`§ 2154.01(b). Fry and its provisional application satisfy each of these substantive
`
`and ministerial requirements.
`
`With respect to the substantive requirement, in Section VIII.C below,
`
`Petitioner demonstrates that claims 11-13 of the ’139 Patent are disclosed in Fry,
`
`and also in at least the ’819 Provisional to which Fry claims priority.1
`
`With respect to the ministerial requirements, as shown on the Application
`
`Data Sheet (ADS) that was filed with the Fry application, Fry included a priority
`
`claim to the ’819 Provisional on the date that it was filed; Fry was filed within one
`
`year of the ’819 Provisional; and Fry and the ’819 Provisional have a common
`
`inventor (Paul Fry), and were filed by the same applicant (Milwaukee Electric
`
`Tool). See Ex. 1009 at 116-122 (ADS for the Fry application); see also Ex. 1008
`
`at 4-10 (ADS for the ’819 Provisional).
`
`
`1 For purposes of this PGR, Petitioner has not analyzed whether the ’483
`
`Provisional provides support for Fry’s claims, nor whether the ’483 Provisional
`
`also includes a disclosure of claims 11-13 of the ’139 Patent. For purposes of this
`
`PGR, Petitioner also has not analyzed whether the ’139 Patent is actually entitled
`
`to its earliest claimed effective filing date of October 6, 2014.
`
`
`
`5
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`

`

`Moreover, Fry also qualifies as prior art to the ’139 Patent under 35 U.S.C.
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`§ 102(a)(2) and “is entitled to claim a right of priority” to the ’819 Provisional
`
`because at least one claim of Fry is supported by the disclosure of the ’819
`
`Provisional, as is shown in the table below.
`
`Fry’s Claim 1
`1[pre] A portable
`power source
`comprising:
`
`
`
`
`
`
`Example Support in the ’819 Provisional (Ex. 1008)
`Title: Portable Power Supply and Battery Charger
`
`Ex. 1008 at 14 (“[0026] … The wheels 26 facilitate
`movement of the power device 10 along a surface
`thereby making the power device 10 portable and
`convenient.”). See also id. at 14 and 27-28 (¶¶ 0025,
`0055, and 0056).
`
`Id. at 29:
`
`
`
`
`See also Ex. 1003 at ¶ 28.
`
`
`
`
`6
`
`

`

`Fry’s Claim 1
`a housing including a
`base portion and a
`top portion, the top
`portion being
`separable from the
`base portion, the top
`portion including a
`lid pivotally
`movable between an
`open position and a
`closed position;
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Example Support in the ’819 Provisional (Ex. 1008)
`Ex. 1008 at 15 (“[0027] … The housing 22 includes a
`base portion 50 and a top portion 54. The base
`portion 50 generally supports the components of the
`power device 10. The top portion 54 includes a storage
`compartment 58 (FIG. 3) and a lid 62 (FIG. 2). As
`shown in FIG. 2, the lid 62 covers the storage
`compartment 58. The lid 62 is coupled to the top
`portion 54 of the power device 10 by a hinge. The lid
`62 is pivotable between a closed position (FIG. 2) and
`an open position (FIG. 3).”). See also paragraphs
`[0037] and [0038].
`
`
`Id. at 31:
`
`
`
`
`See also Ex. 1003 at ¶ 28.
`
`
`
`
`
`
`7
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`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`
`Ex. 1008 at 11 (“[0002] The invention provides a
`power device including a battery receptacle, a battery
`received by the battery receptacle, a power tool battery
`port, and a power tool battery pack received by the
`power tool battery port.”)
`
`Id. at 15 (“[0027] … The base portion 50 generally
`supports the components of the power device 10.”).
`
`Id. at 19-20 (“[0038] As shown in FIG. 9, when the top
`portion 54 is removed from the base portion 50, the
`lead acid battery 14 is exposed. The base portion 50
`includes a front member 166 and a top member 170
`to hold the battery 14 in place within the power
`device 10. The front member 166 inhibits the battery
`14 from moving forward, while the top member 170
`inhibits the battery 14 from moving toward the top of
`the power device 10, for instance, if the power device
`10 is positioned upside down. …”).
`
`Id. at 37:
`
` a
`
` battery receptacle
`supported by the base
`portion of the
`housing, the battery
`receptacle
`configured to
`receive a battery;
`
`
`See also Ex. 1003 at ¶ 28.
`
`
`
`
`
`
`8
`
`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Example Support in the ’819 Provisional (Ex. 1008)
`
`Ex. 1008 at 15 (“[0027] … The top portion 54 includes
`a storage compartment 58 (FIG. 3) and a lid 62 (FIG.
`2). As shown in FIG. 2, the lid 62 covers the storage
`compartment 58. The lid 62 is coupled to the top
`portion 54 of the power device 10 by a hinge. The lid
`62 is pivotable between a closed position (FIG. 2) and
`an open position (FIG. 3). As shown partly in FIG. 3,
`the storage compartment 58 includes a removable
`storage bin 66, a first battery pack charging port 70
`(FIG. 5), a second battery pack charging port 72
`(FIG. 5), a first battery pack charging indicator 73A, a
`second battery pack charging indicator 73B, an elastic
`storage compartment 74, and a solar charging array
`78.”).
`
`Id. at 32-33:
`
`
`
`
`
`Fry’s Claim 1
`
` a
`
` first power tool
`battery pack port
`supported by the top
`portion of the
`housing, the first
`power tool battery
`pack port configured
`to receive a first
`power tool battery
`pack;
`
`
`
`9
`
`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Example Support in the ’819 Provisional (Ex. 1008)
`
`Fry’s Claim 1
`
`
`
`
`Id. at 16 (“[0030] The battery packs 86, 90 are power
`tool battery packs generally used to power a power
`tool, such as an electric drill, an electric saw, and the
`like.”)
`
`See also Ex. 1003 at ¶ 28.2
`
`
`Ex. 1008 at 11 (“[0002] … The power device also
`includes a power supply unit configured to receive
`power from an external power source, and a charging
`circuitry. The charging circuitry is coupled to the
`battery, the power supply input, and the power tool
`battery pack. The charging circuitry is configured
`to charge the power tool battery pack using
`selectively received power from the power supply
`input and the battery received by the battery
`receptacle.”).
`
`Id. at 24 (“[0049] The first charging circuitry 242 is
`electrically connected to the controller 234, the
`transformer 238, the DC power input 214, the
`
`2 All color and annotations added to the figures throughout unless otherwise noted.
`
` a
`
` charging circuit
`coupled to the
`battery receptacle
`and the power tool
`battery pack and
`configured to
`receive power from
`the battery
`receptacle and to
`provide power to
`the power tool
`battery pack port;
`
`
`
`10
`
`

`

`Fry’s Claim 1
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Example Support in the ’819 Provisional (Ex. 1008)
`battery 14, the first battery pack 86, and the second
`battery pack 90. The first charging circuitry 242
`controls the charging scheme for the battery packs 86,
`90. In some embodiments, the first charging circuitry
`242 varies a charging current based on the temperature
`of the battery pack 86, 90, the state of charge of the
`battery pack 86, 90, the amount of time the battery
`pack 86, 90 has been charging, requests from the
`battery pack 86,90, and other factors. The first
`charging circuitry 242 receives DC power from one
`of the transformer 238, the DC power input 214,
`and the battery 14. …”).
`
`Id. at 41:
`
`
`See also id. at 24-27 (¶¶ 0050-0055).
`
`See also Ex. 1003 at ¶ 28.
`
`
`
`
`
`
`11
`
`

`

`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Example Support in the ’819 Provisional (Ex. 1008)
`
`Ex. 1008 at 23-24 (“[0048] The inverter 246 is
`connected to the DC power input 214, the battery
`14, the battery packs 86, 90, the AC power output
`202, and the controller 234. The inverter 246
`converts the DC power from a DC source, such as one
`selected from the group of the DC power input 214, the
`battery 14, and the battery packs 86, 90, to AC
`power. The inverter 246 includes, for instance, power
`switching elements selectively enabled by the
`controller 234 to transform DC power to AC power.
`The inverter 246 transfers the AC power to the AC
`power output 202 to provide power to an AC-powered
`peripheral device. …”).
`
`Id. at 41:
`
`Fry’s Claim 1
`
`
`an inverter including
`a DC input coupled
`to the battery
`receptacle, inverter
`circuitry, and an AC
`output, the inverter
`circuitry configured
`to receive power
`from the battery
`receptacle via the
`DC input, invert DC
`power received from
`the battery
`receptacle to AC
`power, and provide
`the AC power to the
`AC output;
`
`
`See also Ex. 1003 at ¶ 28.
`
`
`
`
`
`
`12
`
`

`

`
`wherein the battery
`is exposed when the
`top portion is
`separate from the
`base portion, and
`wherein the lid
`provides access to
`the power tool
`battery pack port
`and the battery when
`the lid is in the open
`position.
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`
`Ex. 1008 at 19-20 (“[0038] As shown in FIG. 9, when
`the top portion 54 is removed from the base portion 50,
`the lead acid battery 14 is exposed.)
`
`Id. at 15 (“[0027] … The housing 22 includes a base
`portion 50 and a top portion 54. The base portion 50
`generally supports the components of the power device
`10. The top portion 54 includes a storage compartment
`58 (FIG. 3) and a lid 62 (FIG. 2). As shown in FIG. 2,
`the lid 62 covers the storage compartment 58. The
`lid 62 is coupled to the top portion 54 of the power
`device 10 by a hinge. The lid 62 is pivotable between
`a closed position (FIG. 2) and an open position
`(FIG. 3). As shown partly in FIG. 3, the storage
`compartment 58 includes a removable storage bin
`66, a first battery pack charging port 70 (FIG. 5), a
`second battery pack charging port 72 (FIG. 5), a
`first battery pack charging indicator 73A, a second
`battery pack charging indicator 73B, an elastic storage
`compartment 74, and a solar charging array 78.”).
`
`
`Id. at 31:
`
`
`
`
`
`
`
`
`
`
`13
`
`

`

`Fry’s Claim 1
`
`Case No. PGR2020-00007
`Petition for PGR of ’139 Patent
`
`
`Example Support in the ’819 Provisional (Ex. 1008)
`
`Id. at 37:
`
`
`See also id. at 19-20 (¶¶ [0037] and [0038]).
`
`See also Ex. 1003 at ¶ 28.
`
`
`
`
`For at least these reasons, Fry qualifies as prior art to the ’139 Patent under
`
`at least 35 U.S.C. § 102(a)(2) because it “is entitled to claim a right of priority” to
`
`at least February 26, 2014, which is before the October 6, 2014 earliest claimed
`
`effective filing date of the ’139 Patent.
`
`V. BACKGROUND
`A. Brief Overview of The ’139 Patent
`The ’139 Patent highlights the desirability of using “cordless power tool
`
`
`
`battery packs to drive [] corded power tools,” and “cordless power tool battery
`
`
`
`14
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`packs to run non-power tool electrical device[s] that are also designed to operate
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`Petition for PGR of ’139 Patent
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`from wall (AC, mains line) power.” Ex. 1001 at 2:18-23. The ’139 Patent
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`explains that, while certain power supply systems were available, such
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`conventional portable power supply systems failed to provide these desirable
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`features:
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`conventional systems provide for a battery pack for operating a set of
`cordless power tools and a battery for operating the battery based
`portable power supply wherein the battery pack for operating the set
`of cordless power tools cannot supply power to the portable power
`supply and the battery for operating the portable power supply cannot
`supply power to the cordless power tools
`Id. at 2:12-18. As such, the ’139 Patent seeks to address these failures with a
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`battery-pack-based portable power supply, where the battery pack is from a
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`cordless power tool, and where the battery-pack-based portable power supply is
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`able to use the battery pack to power other devices, such as cordless power tools.
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`See id. at 2:53-67 (describing the battery-pack-based portable power supply, and
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`explaining that “the removable battery pack is able to provide power to both the
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`portable power supply and the cordless power tools.”).
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`The ’139 Patent’s battery-pack-based portable power supply is illustrated in
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`Figures 3 and 4, which are reproduced below:
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`15
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`Petition for PGR of ’139 Patent
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`Id. at Figures 3-4.
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`As depicted above, the battery packs 18 “include an electromechanical
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`interface 20 configured to removably mate/couple with the housing
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`electromechanical interface 16 and an electromechanical interface 24 of a cordless
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`16
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`power tool 22 and when electromechanically mated to the housing
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`Case No. PGR2020-00007
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`electromechanical interface, [are] configured to provide power to an inverter 32.”
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`Id. at 13:18-24. The ’139 Patent specifies that “the interfaces 16, 24 are configured
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`such that the battery pack 18 can mate with both the tool interface 24 and the
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`power supply interface 16 and provide power to both the tool 22 and the power
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`supply 10.” Id. at 13:40-43. Additionally, when the battery packs are coupled to
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`the housing electromechanical interface 16, the ’139 Patent’s portable power
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`supply system is able to charge the battery packs 18. See, e.g., id. at 20:40-44
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`(describing use of “a charger 56 to charge the battery pack(s) 18 that are coupled to
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`the portable power supply” when that portable power supply “is coupled to the
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`wall/AC mains voltage.).
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`In sum, and as relevant to claims 11-13, the ’139 Patent describes a portable
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`power supply that can both charge power tool battery packs, and use power from
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`such power tool battery packs to provide power to other connected devices (e.g., a
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`corded power tool connected to the portable power supply). Ex. 1003 at ¶¶ 16-20.
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`Summary of Prosecution History of the ’139 Patent
`B.
`All claims of the ’139 Patent, including claims 11-13, were twice rejected by
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`the U.S. Patent Office using prior art that is not relied on in this Petition’s grounds
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`of unpatentability. In responding to a first rejection that a Liu reference (Ex. 1020)
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`anticipated claim 11, Patent Owner argued that Liu “does not disclose, describe or
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`17
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`suggest a second electrical device that is electrically coupleable to the battery pack
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`when the battery pack is removed from the receptacle of the charging device.” Ex.
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`1002 at 116.
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`In responding to a second rejection that a Sainsbury reference (Ex. 1019)
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`anticipated claim 11, Patent Owner disputed the contention that “elements 19 and
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`20 of the Sainsbury reference are battery packs,” insisting instead that these
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`elements that form a “multi-functional battery module” could not be a battery pack,
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`because “the Sainsbury reference distinguishes between a battery pack and a multi-
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`functional battery module.” Ex. 1002 at 57. Patent Owner also argued that “[t]he
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`plug 18 of the Sainsbury reference (noted by the Office as a ‘power input
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`connector’ recited in claim 11) is not part of the adapter 35 (noted by the Office as
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`‘a container’ recited in claim 11) as is required in claim 11.” Id. at 57-58.
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`The Examiner then allowed claims 11-13—noting, in relevant part, as
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`reasons for allowance that:
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`[t]he prior art does not disclose or suggest the following: … ‘wherein
`the power output connector is electrically coupleable to the first
`electrical device to power the first electrical device when the battery
`pack is received in the receptacle, and wherein the battery pack is
`electrically coupleable to the second electrical device to power the
`second electrical device when the battery pack is removed from the
`receptacle.’
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`18
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`Id. at 20.
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`Furthermore, in a corresponding European patent application related to the
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`’139 Patent, when again confronted with rejections to the same language in claim
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`11 based on the same Sainsbury reference (see Ex. 1022 at 3 (rejecting
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`independent claim 7, which included the same language as claim 11 in the ’139
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`Patent, using Sainsbury alone)), Patent Owner declined to argue about any
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`purported distinctions with respect to Sainsbury. See Ex. 1021 at 19 (Patent
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`Owner’s response to the extended European search report, which included no
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`arguments regarding any distinctions over Sainsbury). Indeed, Patent Owner did
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`not argue that Sainsbury fails to disclose battery packs, nor did Patent Owner
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`identify any other distinctions over the Sainsbury reference. Id. Additionally,
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`Patent Owner did not dispute the contention in the extended European search
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`report that independent claim 7 (which had the same language as claim 11 of the
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`’139 Patent) “is clearly anticipated by the disclosure of D1 [Sainsbury] due to the
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`broadly defined features in said claims which are as such encompassed in said
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`D1.” Ex. 1022 at 3 (contention in extended European search report); Ex. 1021 at
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`19 (no rebuttal from the Patent Owner).
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`Instead, acquiescing to the European examiner’s unrebutted assertion that
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`the “objective of the present application appears to be … simultaneously us[ing]
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`the mains and the battery pack power to increase the power available to perform
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`19
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`work” (Ex. 1022 at 2), Patent Owner cancelled nine claims, and proceeded by
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`significantly amending the sole remaining independent claim 7 to recite features
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`related to (i) combining AC and DC input powers together and (ii) coupling both
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`the AC and DC input power “to the power output connector (218) in parallel or in
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`series and/or either in an alternating manner or in a simultaneous manner.” Id. at
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`4-7 (Patent Owner’s amendments to the claims in response to the extended
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`European search report).
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`Thus, the prosecution history in Europe provides further indicia that the
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`Patent Owner appreciates the weaknesses of arguments presented during U.S.
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`prosecution, which further supports Petitioner’s position that the Board should
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`reassess patentability of claims 11-13.
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`C. Cited References
`In addition to Patent Owner’s actions during European prosecution, the new
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`references cited herein confirm that the Board must reassess patentability of claims
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`11-13 because these new references were not made available to the Examiner
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`during prosecution, and these new references disclose each and every limitation of
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`claims 11-13.
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`A brief overview of each of the new references is below. As will become
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`apparent, claims 11-13 are unpatentable because portable power supplies that both
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`charge rechargeable battery packs, and use power from such rechargeable battery
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`20
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`packs to provide power to other connected devices (e.g., a corded power tool or a
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`cellular phone connected to the portable power supply) were known before the
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`’139 Patent. Ex. 1003 at ¶ 21.
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`Zick
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`Zick describes “an electrical component 20, such as a combination radio and
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`power tool battery charger,” which is depicted in Zick’s Figures 1 and 21:
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`Ex. 1005 at Figures 1 and 21. Zick’s combined radio and power tool battery
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`charger is able to “charge a battery,” such as battery 64 in Zick, which is inserted
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`into a receptacle of Zick’s system for charging. Id. at 8:52-62 and 9:28-36; see
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`also id. at Figure 3 (reproduced below, which depicts receptacle 44 (red below) of
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`Zick with battery 64 (green below) inserted therein).
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`21
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`Id. at Figure 3. Zick also teaches that power from its battery 64 is used to power
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`peripheral devices by way of a DC outlet 390 (highlighted in red in Figure 21,
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`which is reproduced below).
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`22
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`Id. at Figure 21; see also id. at 15:14-16 (“DC outlet 390 [is] for supplying power
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`to DC electrical equipment, such as, for example a cell phone, a cell phone
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`charger, an auxiliary audio component, an automotive power accessory, etc.”) and
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`15:18-21 (“The DC outlet 390 is electrically connected to the battery 70 and,
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`therefore, is operable to electrically connect and supply power from the
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`battery 70 to the electrical equipment.”).
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`Zick further indicates that “the battery 64 is a slide-on power tool battery 70
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`operable to power a power tool 71, such as, for example, a drill, a circular saw, a
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`reciprocatin