`
`NOTE: This disposition is nonprecedential.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.
`
`