throbber

`
`NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`SNAP-ON INCORPORATED,
`Appellant
`
`v.
`
`MILWAUKEE ELECTRIC TOOL CORPORATION,
`METCO BATTERY TECHNOLOGIES, LLC, TTI
`(MACAO COMMERCIAL OFFSHORE) LTD., FKA
`AC (MACAO COMMERCIAL OFFSHORE) LTD.,
`TECHTRONIC INDUSTRIES CO. LTD.,
`Appellees
`______________________
`
`2017-1305, 2017-1306, 2017-1307, 2017-1330, 2017-1331,
`2017-1332
`______________________
`
`Appeals from the United States Patent and Trade-
`mark Office, Patent Trial and Appeal Board in Nos.
`IPR2015-01164,
`IPR2015-01165,
`IPR2015-01166,
`IPR2015-01242,
`IPR2015-01243,
`IPR2015-01244,
`IPR2016-00343, IPR2016-00344, IPR2016-00345.
`______________________
`
`Decided: February 16, 2018
`______________________
`
` AMOL A. PARIKH, McDermott Will & Emery LLP,
`Chicago, IL, argued for appellant. Also represented by
`JOSEPH H. PAQUIN, JR.; PAUL DEVINSKY, Washington, DC.
`
`

`

`
`
` 2
`
` SNAP-ON INC. v. MILWAUKEE ELECTRIC TOOL CORP.
`
`
`JASON C. WHITE, Morgan, Lewis & Bockius LLP,
`
`Chicago, IL, argued for appellees. Also represented by
`SCOTT D. SHERWIN; DION MICHAEL BREGMAN, Palo Alto,
`CA; JULIE S. GOLDEMBERG, Philadelphia, PA; WILLIAM R.
`PETERSON, Houston, TX.
`______________________
`
`Before REYNA, TARANTO, and CHEN, Circuit Judges.
`CHEN, Circuit Judge.
`Snap-on Incorporated (Snap-on) appeals from the fi-
`nal written decisions of the Patent Trial and Appeal
`Board (Board) in the above-captioned inter partes review
`proceedings (IPRs) that found certain claims of three of
`Appellees’ patents to be nonobvious over prior art combi-
`nations argued by Snap-on.1 Appellees’ patents claim
`battery packs comprising a plurality of battery cells. The
`parties dispute, inter alia, the proper construction of a
`claim term that appears in substantially identical form in
`each of the challenged claims: “the battery cells being
`capable of producing an average discharge current greater
`than or equal to approximately 20 amps” (20-Amp Limita-
`tion). See, e.g., J.A. 268, ’290 patent col. 12 ll. 18–22.2
`
`
`1
`In particular, the Board found the following
`claims to be nonobvious over Snap-on’s prior art combina-
`tions: claims 1–11 of U.S. Patent No. 7,554,290; claims 1–
`13 of U.S. Patent No. 7,994,173; and claims 1–19 of U.S.
`Patent No. 7,999,510 (collectively, “challenged claims”).
`2 All citations to the joint appendix and briefs are to
`filings submitted in case no. 16-2658, which previously
`served as the lead case in this consolidated appeal until
`the appellants in that case settled with Appellees and the
`case was dismissed shortly before oral argument.
`
`

`

`SNAP-ON INC. v. MILWAUKEE ELECTRIC TOOL CORP.
`
`3
`
`The Board construed the 20-Amp Limitation to mean
`“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, e.g., J.A. 410.3
`This was the construction adopted by the United States
`District Court for the Eastern District of Wisconsin in
`prior litigation involving Appellees’ patents. See Milwau-
`kee Elec. Tool Corp. v. Hitachi Koki Co., 2012 WL
`10161527, No. 09-C-948, at *3–4 (E.D. Wis. Dec. 11,
`2012). The Board endorsed the district court’s analysis in
`adopting the claim construction. See, e.g., J.A. 441.
`Snap-on argues that the Board erred by including
`“over the course of delivering their entire rated capacity”
`in the construction because, according to Snap-on, this
`language
`includes “concepts
`found nowhere
`in the
`[c]hallenged [p]atents.” Snap-on Reply Br. 3. However,
`the Board adopted the district court’s conclusion that “the
`capacity of a battery is normally measured by discharging
`at a constant current until the battery has reached its
`terminal voltage.” Milwaukee Elec. Tool, 2012 WL
`10161527, at *4. This conclusion is supported by a dic-
`tionary definition of “rated capacity,” which is defined as
`“[t]he manufacturer’s statement of the number of ampere-
`hours or watt-hours that can be delivered by a fully
`charged battery at a specific discharge rate and electro-
`lyte temperature, to a given end-of-discharge voltage.” Id.
`(quoting IEEE 100: The Authoritative Dictionary of IEEE
`Standard Terms 920 (7th ed. 2000)). Nothing in the
`specifications or prosecution histories of the challenged
`patents displaces or undermines the idea that a battery
`pack’s capability is measured over its entire rated capaci-
`
`
`3 Regarding the issue of claim construction, the
`Board’s analyses and the parties’ arguments are substan-
`tially the same for each of the IPRs.
`
`

`

`
`
` 4
`
` SNAP-ON INC. v. MILWAUKEE ELECTRIC TOOL CORP.
`
`ty. Because the record supports this notion, we reject
`Snap-on’s argument on this issue.
`Snap-on also argues that the Board erred in “entirely
`read[ing] out” the term “average” in its construction.
`Snap-on Open. Br. 33. We agree. As a general matter, we
`construe a claim term to take on its plain and ordinary
`meaning to one of skill in the art when read in the context
`of the specification and prosecution history. Wasica Fin.
`GmbH v. Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1282 (Fed.
`Cir. 2017). Appellees’ own cited expert testimony states:
`One of ordinary skill in the art in relation to the
`patents in suit would have understood that the
`term “average discharge current greater than or
`equal to approximately 20 amps” as used in the
`patents in suit referred primarily to the capability
`of providing an average discharge current of ap-
`proximately 20 amps, and that it included the op-
`erational range of currents for battery packs for
`hand held power tools.
`J.A. 12336–37 (emphasis added). Thus, Appellees’ own
`expert included the word “average” in his stated interpre-
`tation of the 20-Amp Limitation.
`Appellees nevertheless argue that omission of the
`word “average” from the Board’s construction is supported
`by evidence in the record showing that batteries were
`commonly tested using “[c]onstant current discharge
`tests” that held current constant while measuring voltage.
`Resp. Br. 42 (citing J.A. 3898–99). While this may be
`true, there is no indication in the specification4 that this
`sort of testing should limit the plain and ordinary mean-
`ing of “average,” which would include situations when
`current rises above and dips below the 20-amp target so
`
`4 All of the patents at issue have substantially iden-
`tical specifications.
`
`

`

`SNAP-ON INC. v. MILWAUKEE ELECTRIC TOOL CORP.
`
`5
`
`long as the average discharge current over the entire
`rated capacity is 20 amps or greater.
`The specification references the 20-Amp Limitation in
`only one place:
`In some constructions, the battery pack 30 can
`power various power tools (including a driver drill
`300 and circular saw 305) having high discharge
`current rates. For example, 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 approxi-
`mately 3.0 A-h.
`J.A. 267, ’290 patent col. 10 ll. 20–26. Snap-on argues,
`and Appellees do not dispute, that a battery pack dis-
`charges current in bursts when used with a circular saw,
`such that the current would swing above and below 20
`amps. The fact that the phrase “average discharge cur-
`rent” is only used in the portion of the specification de-
`scribing an “example” of embodiments that undisputedly
`discharge current at levels that swing above and below 20
`amps shows that the word “average” should take on its
`ordinary meaning, especially given the Board’s obligation
`to use the broadest reasonable construction in IPRs.
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142
`(2016).
`For the foregoing reasons, we hold that the correct
`claim construction of the 20-Amp Limitation is: “the
`battery cells, when configured together in a battery pack,
`are capable of producing, on average, reasonably close to
`20 amps of discharge current or greater over the course of
`delivering their entire rated capacity.” Although the
`Board erred in omitting the word “average” from its
`construction, the Board’s fact findings regarding obvious-
`ness are still supported by substantial evidence and the
`
`

`

`
`
` 6
`
` SNAP-ON INC. v. MILWAUKEE ELECTRIC TOOL CORP.
`
`Board’s legal determinations of obviousness are correct
`under the proper claim construction.5 The harmless error
`rule applies to appeals from the Board. See, e.g., In re
`Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004). Regarding
`Hilti’s proposed combination of the Takano and Yanai
`prior art references, substantial evidence supports the
`Board’s conclusion that the Yanai cells referred to in
`Hilti’s petition would never reach the 20-amp threshold,
`let alone that the cells could sustain operation, on aver-
`age, at 20 amps. See generally, e.g., J.A. 415–25. With
`respect to Snap-on’s proposed combination of Fohr, Sato,
`and Hallaj, substantial evidence supports the Board’s
`conclusion that a person of ordinary skill in the art would
`have no motivation to combine these references and no
`reasonable expectation of success in achieving the 20-Amp
`Limitation, even under the proper construction. See
`generally, e.g., J.A. 796–804.
`We have considered all of Snap-on’s remaining argu-
`ments and find them to be unpersuasive in overcoming
`the foregoing conclusions.
`AFFIRMED
`
`
`5 We have considered all of the arguments in the
`briefs submitted by Snap-on and Hilti, Inc. (co-petitioner
`for three of the above-captioned IPRs) and find them to be
`unpersuasive, even under the correct claim construction.
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket