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Milwaukee Electric Tool Corp. v. Snap-On Incorporated

United States District Court, E.D. Wisconsin

December 29, 2017



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

         This is a patent case about lithium-ion batteries used in power tools. The case was tried to a jury in October 2017. The jury rendered a verdict in favor of Plaintiffs and awarded nearly $28 million in damages. Before the Court are the parties' post-trial motions. For the reasons stated below, the Court will deny post-trial relief to Defendant Snap-On Incorporated (“Snap-On”), deny Plaintiffs' motion for enhanced damages, and grant in part Plaintiffs' motion for pre-judgment interest.

         1. BACKGROUND

         In the early 2000s, Plaintiff Milwaukee Electric Tool Corporation (“Milwaukee”) teamed up with Canadian battery manufacturer E-One Moli Energy (Canada) Ltd. (“Moli”) to develop a lithium-ion (“Li-ion”) battery usable in a power tool. Cordless power tools were traditionally powered by nickel-cadmium (“Ni-Cd”) or nickel-metal hydride batteries, as Li-ion battery cells could not safely or reliably produce sufficient power output for such high-power applications. In what was dubbed the “884 Project, ” a joint team of Milwaukee and Moli scientists labored for many months to produce a working Li-ion battery pack, which was finally reduced to practice in late 2002. Milwaukee's first line of Li-ion powered tools, the V28, was debuted in 2005 to great acclaim.

         In June 2009, Plaintiffs obtained patents on the Li-ion battery pack technology they developed with Moli. The critical independent claim found in all three patents-in-suit recites:

a battery pack for powering a hand held power tool, the battery pack comprising:
a housing connectable to and supportable by the hand held power tool; and a plurality of battery cells supported by the housing, the battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps, the battery cells having a lithium-based chemistry.

         The penultimate clause is known as the “20 Amp Limitation, ” and it has featured prominently in the parties' legal and factual disputes in this case. Snap-On developed its own line of Li-ion tools that was launched in September 2009.

         This infringement action was filed on October 16, 2014, and is well past its third birthday. The case lived much of its life under a stay granted at Snap-On's request so that it and other accused infringers could seek inter partes review (“IPR”) of the patents-in-suit before the United States Patent and Trademark Office (“USPTO”). None of the IPRs was successful in invalidating any part of the patents, although appeals of the IPR decisions are still pending in the Court of Appeals for the Federal Circuit.

         In December 2016, after the Patent Trial and Appeal Board (“PTAB”) issued its decisions on the latest round of IPRs, the Court lifted the stay and discovery proceeded apace. The Court addressed matters of claim construction and the parties' arguments on summary judgment in an order dated September 22, 2017. Milwaukee Elec. Tool Corp. v. Snap-On Incorporated, No. 14-CV-1296-JPS, 2017 WL 4220457 (E.D. Wis. Sept. 22, 2017).

         The case was tried to a jury beginning on October 16, 2017. See (Docket #313). During the course of the eight-day trial, the jury was shown hundreds of documents, numerous physical exhibits, and heard testimony from twenty-four witnesses, including seven experts. The jury returned a verdict for Plaintiffs on October 26, 2017. See (Docket #316). The jury found that Snap-On's accused products infringed each asserted claim of the patents-in-suit. Id. at 1-4. The jury further found that none of the subject claims were invalid as obvious under 35 U.S.C. § 103 and that Snap-On's infringement of the patents was willful. Id. at 4-5. Finally, the jury awarded compensatory damages in the form of a lump-sum reasonable royalty in the amount of $27.8 million. Id. at 5.

         2. ANALYSIS

         The parties' post-trial motions cover myriad issues pertaining to liability and damages. Snap-On's two motions seek judgment as a matter of law and a new trial, respectively. Plaintiffs also filed two post-trial motions, the first requesting treble damages and the second seeking pre- and post-judgment interest. The Court will address each motion in turn.

         2.1 Snap-On's Motion for Judgment as a Matter of Law

         Federal Rule of Civil Procedure 50 provides that “[a] motion for judgment as a matter of law may be made at any time before the case is submitted to the jury.” Fed.R.Civ.P. 50(a). The Rule allows a party to move for judgment on a particular claim when (1) “a party has been fully heard on an issue during a jury trial, ” and (2) “the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the [non-moving] party on that issue.” Fed.R.Civ.P. 50(a)(1). Rule 50(b) is used to renew after trial a motion under Rule 50(a). Id. 50(b). In ruling on the renewed motion, the court may uphold the jury's verdict, order a new trial, or direct entry of judgment as a matter of law. Id.

         In patent cases, the law of the regional circuit sets the standard applied to motions under Rule 50. Summit Tech. Inc. v. Nidek Co., 363 F.3d 1219, 1223 (Fed. Cir. 2004). The Seventh Circuit instructs that

[i]n deciding a Rule 50 motion, the court construes the evidence strictly in favor of the party who prevailed before the jury and examines the evidence only to determine whether the jury's verdict could reasonably be based on that evidence. The court does not make credibility determinations or weigh the evidence. Although the court reviews the entire record, the court must disregard all evidence favorable to the moving party that the jury [was] not required to believe.

Passananti v. Cook Cnty., 689 F.3d 655, 659 (7th Cir. 2012) (internal citations and quotations omitted).

         In its renewed motion for judgment as a matter of law pursuant to Rule 50(b), (Docket #347), Snap-On addresses three issues. First, it contends that the evidence at trial proved its obviousness defense, contrary to the jury's verdict. Second, it challenges the finding of infringement as to two of its packs that Plaintiffs' battery expert, Dr. Mark Ehsani (“Ehsani”), could not and did not test. Finally, Snap-On seeks reversal of the jury's finding that its infringement was done willfully.[1]

         The bulk of Snap-On's arguments ignore the standard of review, which permits reversal of the verdict only if no reasonable jury could have decided as this jury did. Snap-On seems to think it can succeed if it shows merely that it could have convinced the jury to go its way, but this is no reason to disturb the jury's determinations. A brief examination of each issue shows that the jury's conclusions were supported by sufficient evidence.

         2.1.1 Obviousness

         Snap-On first contends that the asserted claims were obvious in light of the prior art. An obviousness challenge requires a showing that “the differences between the 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).[2] 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). Patents are presumed valid, Microsoft Corp. v. i4i Ltd P'ship, 131 S.Ct. 2238, 2243 (2011), so an invalidity defense like obviousness can only succeed if proven by clear and convincing evidence, Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 993 (Fed. Cir. 2009).

         The thrust of Snap-On's obviousness argument to the jury was that Plaintiffs' patents simply substituted Li-ion battery cells, created by Moli, for the Ni-Cd cells used in existing battery packs. See (Docket #348 at 8); (Docket #369 at 5). Everything else about the packs, including using the 20 Amp Limitation as an industry-standard performance benchmark, remained the same. (Docket #348 at 8). Because of the simplicity of the change introduced in the patents, Snap-On contended that a person of ordinary skill in electronics and power tool design would have easily arrived at the same invention. Id. at 14-15. The jury did not buy the argument, and there was plenty of evidence introduced at trial to support that finding.

         First, the original prototype cells Moli provided to Milwaukee, with a rated capacity of 15 amps, could not meet the 20 Amp Limitation. Snap-On's own expert, Dr. Quinn Horn (“Horn”), conceded this. Second, the later-developed cells, while more powerful, did not support an obviousness claim. Those cells were developed jointly by Milwaukee and Moli, suggesting that they were not prior art at all since they emanated in part from Milwaukee's own work.[3] This is true even though Moli's scientists were certainly the battery experts; Milwaukee's witnesses testified that they contributed performance requirements and other information based on their own expertise as battery pack designers, something Moli did not know anything about. That the Moli contributors now believe they did the lion's share of the work is not conclusive on the point. The jury was entitled to view such testimony with skepticism.

         This fact distinguishes the instant case from Morgan v. Hirsch, 728 F.2d 1449, 1452 (Fed. Cir. 1984), cited by Snap-On, in which the parties disputed who had invented a particular thermal fabric and a method for manufacturing it. The plaintiff sought to show that he conceived of the fabric before the defendant by pointing to his work with another fabric maker. Id. at 1451. The other maker sent successive samples of product to the plaintiff and he rejected each one until he was happy with the result. Id. The court found this insufficient to support the plaintiff's conception of the invention, since he did not actually invent anything: “[h]e only posed the problem.” Id. at 1452. What the plaintiff did not contribute in that case were any specific requirements for the fabric, only criticisms of the samples he was sent. Id. Thus, said the Court of Appeals, he had not engaged in invention. Id.

         Unlike Morgan, here the evidence showed that Milwaukee and Moli worked closely together to develop a working Li-ion battery pack for a power tool. Moli knew battery chemistry, but did not understand how that chemistry needed to work in a final battery pack. Conversely, while Milwaukee could do little to suggest chemical changes to the battery cells, it did not passively receive Moli's samples. Rather, because Milwaukee knew the ultimate performance requirements for the battery packs, it ensured that Moli's cells were tested in conformity with those standards and relayed the deficiencies in the cells as they were developed over time. If this case concerned only the development of battery cells, Morgan might be an apt analogy. Yet because Milwaukee made important inventive contributions to the development of the battery pack that is the subject of the patents-in-suit, the analogy fails.

         Moreover, the jury apparently believed the testimony from Plaintiffs' experts that testing of individual Moli cells, which is all Horn offered, could not be extrapolated to arrive at what a battery pack containing those cells could do. Either way, the jury was not required to conclude that the Moli cells rendered the patented invention obvious. The jury was well within its province to find Plaintiffs' experts and their opinions more credible.[4]

         Similarly, the jury was permitted to disbelieve Horn's assertion that the Saft battery cells, another component of the prior art, could be combined into a hypothetical pack that would meet the 20 Amp Limitation. No test results confirmed his opinion. Further, one of Plaintiffs' experts, Dr. Jonathan Wood, opined that the Saft brochure introduced at trial did not disclose use of those cells in a handheld power tool, further undermining the notion that a skilled artisan would make that leap.

         The addition of the Moli Powerpoint presentations does not alter the analysis. Those presentations showed a Moli employee using a battery pack with Li-ion cells installed to cut wood. The revelations in the presentations, though exciting, did not entice any tool manufacturer except Milwaukee to invest in further development. The jury did not believe that the presentations offered a sufficient motivation to combine the prior art references, and it was entitled to reject Horn's hindsight deduction that combining the prior art references was elementary. On the state of the record, the Court cannot say that the jury erred in concluding that Snap-On failed to provide clear and convincing evidence of obviousness.

         Finally, secondary considerations of non-obviousness significantly undercut whatever prima facie case Snap-On managed to make. Neither Horn nor any other Snap-On witness addressed these considerations in earnest. What the jury heard, then, was Plaintiffs' evidence that industry analysts saw a need for higher power, lighter cordless tools, that the V28 product line received overwhelming industry accolades, and that the patented technology led to explosive growth of Milwaukee's Li-ion tool sales and lucrative licensing arrangements with competitors. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed. Cir. 1983) (“[E]vidence of secondary considerations may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.”).[5]

         Snap-On attempts to downplay these secondary considerations by attributing Milwaukee's commercial success to non-patented aspects of the V28 products. Snap-On is correct that there must be a nexus between the commercial success of a product and the claimed invention, not the product's unpatented or unclaimed features. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1229, 1311-12 (Fed. Cir. 2006); In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). But in making this argument, Snap-On impermissibly isolates the 20 Amp Limitation and asserts that it is the sole inventive aspect of the patent. (Docket #348 at 17). Snap-On claims that Plaintiffs' secondary considerations expert, Allan Shampine (“Shampine”), never established that the 20 Amp Limitation, which it derides as a “laboratory capability, ” was the moving force behind the success of Milwaukee's products. (Docket #351-1 at 9).

         This strawman argument did not convince the jury and does not convince this Court. The law looks to the invention as a whole-here, a Li-ion battery pack used in a power tool. See Huang, 100 F.3d at 140; WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1329-30 (Fed. Cir. 2016). The jury was permitted to conclude that there existed a nexus between the objective considerations of non-obviousness and the entire patented invention. Granting that the 20 Amp Limitation does not represent how tools are used in the real world, the fact remains that it is a minimum performance characteristic, a baseline that tools performing in high-power situations must meet in order to be reliable. But at a minimum, the 20 Amp Limitation is not the sole inventive aspect of the patent.

         It is no wonder, then, that Shampine openly admitted that the 20 Amp Limitation, standing alone, did not lead to Milwaukee's commercial success in the Li-ion market. Instead, he far more reasonably concluded that products embodying the totality of the patented technology enjoyed unbridled success after their introduction. He both controlled for other important product features, such as brushless motors, and reviewed sales of products containing the patented technology versus those that did not. Shampine found that the patented technology carried with it a huge increase in commercial success. Contrast that with a case like Huang, relied upon by Snap-On, where the inventor offered only his own sworn statement that his product was successful, without any meaningful analysis connecting his invention to that success. Huang, 100 F.3d at 140. As Shampine's testimony and the corroborating documentary evidence reveals, it was the power and reliability of lithium technology that drove the V28's explosive growth. See Rambus Inc. v. Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013). Thus, Shampine's testimony “concerning the advantages of a patented feature in a multi-featured product is sufficient to support the inference of a nexus between the patented feature and the commercial success.” Rambus Inc. v. Hynix Semiconductor Inc., 254 F.R.D. 597, 603 (N.D. Cal. 2008). There was no shortage of cross-examination and argument by Snap-On that he was mistaken and that the V28 product line had many other features that led to its success. The jury simply did not agree.

         For the reasons stated above, the trial record contains sufficient evidence to support the jury's finding that Snap-On did not prove clearly and convincingly that the patents-in-suit were obvious.

         2.1.2 The Untested Packs

         Ehsani, Plaintiffs' battery expert, tested all of the accused packs save two, CTB6185 and CTB6187, the samples of which were defective. (Docket #348 at 22-23). Snap-On contends that in the absence of test data substantiating a claim that the packs met the 20 Amp Limitation, the jury's finding of infringement is unsupported. Id. But Ehsani testified at trial that despite the lack of testing, he believed that the two packs in question met the 20 Amp Limitation because Snap-On assigned them a “maximum continuous discharge current” of 30 amps. (Docket #354 at 24-25). To be sure, Ehsani's reading of the product specification as evidence of the packs' capabilities was not as strong as actual test data. But the jury nevertheless believed him, and Snap-On offers no reason that his testimony was totally unworthy of belief. The finding of infringement as to these two packs will stand.

         2.1.3 Willfulness

         Lastly, Snap-On requests that the Court overturn the jury's finding that it infringed the patents willfully. The evidence on this issue will be covered more comprehensively below in the Court's analysis of whether enhanced damages are appropriate under 35 U.S.C. § 284. See infra Part 2.3. A short summary of the facts supporting the jury's determination is sufficient for present purposes. It should be remembered that in the posture of Snap-On's request for judgment as a matter of law, the Court construes all evidence in Plaintiffs' favor and disregards contrary evidence. Passananti, 689 F.3d at 659. Consequently, its recitation of the evidence here is more generous to Plaintiffs than in the Section 284 context, where the Court is permitted to take its own view of the facts.

         With that caveat in place, the Court turns to the jury's willfulness finding. The Supreme Court held in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S.Ct. 1923 (2016)-which will be reviewed in greater detail below-that willfulness is subjective. A finding of willful infringement is permissible on proof that the defendant acted despite a risk of infringement that was “‘either known or so obvious that it should have been known to the accused infringer.'” Id. at 1390 (quoting In re Seagate, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc)); see also Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 2017-1475, 2017 WL 6044237, at *13 (Fed. Cir. Dec. 7, 2017) (observing that the standard for subjective willfulness was not altered by Halo). This must be shown by a preponderance of the evidence. Halo, 136 S.Ct. at 1934.

         The Court finds sufficient evidence in the trial record to support the jury's willfulness determination. For purposes of this analysis, the Court takes as true that Snap-On did not know of the patents-in-suit prior to October 2011. In that month, Milwaukee sent Snap-On a letter offering to discuss license agreements for sixty-one patents, including the three subject patents in this case. Of course, Snap-On had developed and launched its own Li-ion product years earlier, in September 2009.[6]

         Despite this delay in awareness of the patents, the trial testimony showed that Snap-On did not perform adequate research in response to the letter to determine whether its products might infringe the patents-in-suit. Its head engineer for power tools, John Fuhreck (“Fuhreck”), performed a cursory study of the patents that was not corroborated by a prior art search or an infringement analysis. He concluded that the patents were related to Snap-On's business, but no one took the matter under further consideration. Snap-On declined to take a license and made no changes to its product offerings to accommodate the possibility of infringement.[7]

         Snap-On makes much of Plaintiffs' decision not to accuse it of infringement prior to filing the instant suit in October 2014. Although this decision affects other matters before the Court, including the availability of enhanced damages and pre-judgment interest, it does not fatally undermine the jury's willfulness determination. The course of Snap-On's pre-suit conduct revealed an ongoing lack of concern about the potential for infringement. This was particularly reprehensible in light of the decisions of so many others, including major players in the industry, to pay for a license to the revolutionary Li-ion technology Milwaukee had developed. On that basis, the Court finds that the jury's finding of willfulness cannot be overturned. See WBIP, 829 F.3d at 1340 (ultimately unmeritorious non-infringement defenses, developed during litigation, cannot protect years of culpable pre-suit conduct).

         Snap-On's cited cases do not suggest a different result. In this case, as in Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., No. 2:15-CV-1202-WCB, 2017 WL 2190055, at *2-3 (E.D. Tex. May 18, 2017), the finder of fact did not penalize Snap-On for failing to obtain the advice of counsel as to the potential for infringement. That is prohibited by the Patent Act under 35 U.S.C. § 297, and the jury was expressly instructed to disregard such matters. (Docket #314 at 23). Moreover, in Eli Lilly the jury had before it only one piece of evidence to support a willfulness finding: a letter from the patentee indicating that the infringer appeared to be in need of a license. Eli Lilly, 2017 WL 2190055, at *2. Here, there was far more evidence that Snap-On carried on years of lucrative infringing sales after failing to respond to the October 2011 licensing letter with a minimally adequate analysis of whether a license would be necessary. Snap-On's knowledge of the existence of the patent was not the sole basis for the jury's finding. See (Docket #314 at 23).[8]

         The same facts distinguish the present case from State Industries, Inc. v. A.O. Smith Corp., 751 F.2d 1226, 1235 (Fed. Cir. 1985), where the infringer developed its product without any knowledge of the patented technology and did not know of the patent itself until less than a month before suit was filed, and Gustafson, Inc. v. Intersystems Industrial Products, Inc., 897 F.2d 508, 511 (Fed. Cir. 1990), where the infringer learned of the accusations of infringement only on the day suit was filed. By contrast, here the jury could reasonably have inferred that while the 2011 letter might have been more specific in alleging infringement of the patents-in-suit, the fact remains that Snap-On's response was inadequate and it continued to manufacture and sell closely competing products for years afterward based on what appeared to be a head-in-the-sand approach to infringement. Unlike its cited cases, Snap-On undoubtedly was not “ambush[ed]” with the present claims. Gustafson, 897 F.2d at 511.

         Because Snap-On has provided no basis on which to question any of the jury's challenged findings, the Court is obliged to deny the renewed motion for judgment as a matter of law in its entirety.

         2.2 Snap-On's Motion for New Trial

         Under Federal Rule of Civil Procedure 59, a new trial may be granted to any party on all or part of the issues tried “for any reason for which a new trial has heretofore been granted in an action at law in federal court.” Fed.R.Civ.P. 59(a). As with Rule 50(b) motions, the law of the regional circuit applies to a Rule 59 motion when asserted in the context of a patent suit. Callicrate v. Wadsworth Mfg., Inc., 427 F.3d 1361, 1366 (Fed. Cir. 2005). In the Seventh Circuit, Rule 59 is construed to require a new trial where “the jury's verdict is against the manifest weight of the evidence or if the trial was in some way unfair to the moving party.” Venson v. Altamirano, 749 F.3d 641, 656 (7th Cir. 2014).

         When considering whether the jury's verdict goes against the manifest weight of the evidence, a court analyzes the “general sense of the evidence, assessing the credibility of the witnesses and the comparative strength of the facts put forth at trial.” Mejia v. Cook Cnty., 650 F.3d 631, 633 (7th Cir. 2011) (citations omitted). But “[a] verdict will be set aside as contrary to the manifest weight of the evidence only if ‘no rational jury' could have rendered the verdict.” Moore ex rel. Estate of Grady v. Tuelja, 546 F.3d 423, 427 (7th Cir. 2008) (quoting King v. Harrington, 447 F.3d 531, 534 (7th Cir. 2006)). Similarly, an error in admitting or excluding evidence may warrant a new trial, but only when there is a “significant chance” that the error affected the jury's verdict. Barber v. City of Chi., 725 F.3d 702, 715 (7th Cir. 2013). That said, several errors, harmless on their own, can compound to create a need for a new trial. Id.

         Snap-On's motion for a new trial incorporates, without additional development, the arguments about the weight of the evidence it proffered in its Rule 50(b) motion. See (Docket #351-1 at 8-9). Although the legal standards applied under Rules 50 and 59 are different, see 11 Charles A. Wright, Arthur R. Miller & Mary Kay Kane, Fed. Prac. & Proc. § 2806 (3d ed. 2017), the reasons detailed above that judgment as a matter of law is unwarranted apply with equal force to protect the jury's determinations from a Rule 59 challenge. The evidence was not close enough to warrant retreading that ground here. See Lust v. Sealy, Inc., 277 F.Supp.2d 973, 993 (W.D. Wis. 2003); Emmel v. Coca-Cola Bottling Co. of Chi., 95 F.3d 627, 636 (7th Cir. 1996).

         Worthier of consideration are Snap-On's evidentiary complaints. First, it challenges the jury's finding of non-obviousness, claiming that the jury was misled by evidence about confidentiality agreements and the Court's decision to admit expert testimony about secondary considerations. Second, Snap-On asserts that it was improperly precluded from offering Horn's opinion about the allegedly unusual testing conditions Ehsani employed. Third, Snap-On believes that the Court unduly limited Fuhreck's testimony about the scope of his response to Milwaukee's October 2011 letter. Finally, says Snap-On, the Court committed a series of prejudicial errors during the damages phase of the evidence that prevented it from fairly presenting its contentions to the jury. For the reasons stated below, none of these asserted errors were, in fact, erroneous, nor do they warrant a new trial.

         2.2.1 Obviousness

         Snap-On asserts two purported errors in the Court's evidentiary rulings relating to obviousness. First, it says that the Court should have excluded Shampine's testimony on secondary considerations because he “failed to link the inventive aspect of the claims, the 20 Amp Limitation as construed by the Court, to any alleged commercial success, industry praise or long-felt need.” (Docket #351-1 at 9). As explained above, Shampine was not required to do more than he did. His testimony showed that the Li-ion technology in the V28 product line drove its massive commercial success and garnered wide praise for achieving a long-sought innovation. Snap-On artificially cabins the scope of the invention in order to state that the nexus requirement has not been met. See supra Part 2.1.1.

         Snap-On's other objection is directed at the letters of intent between Milwaukee and Moli executed during the 884 Project and the eventual assignment of Moli's rights in the patents to Milwaukee in 2006. According to Snap-On, this evidence misled the jury into believing that the Moli cells provided to Milwaukee during the 884 Project were not prior art at all because the rights to them were somehow owned by Milwaukee. (Docket #351-1 at 11). Snap-On sought a curative instruction explaining that these documents did not affect the prior-art status of the Moli cells. Id. at 12.

         The Court declined to issue that instruction because the inference Snap-On feared could not reasonably be drawn from the evidence. First, the letters of intent and assignment were not introduced for purposes of the prior art question. See (Docket #357-1 at 10-11). More importantly, to the extent the letters or assignment affected the prior-art status of the cells, they were properly used as circumstantial evidence of Milwaukee and Moli's joint development efforts.

         As a definitional matter, prior art under 35 U.S.C. § 102(f) must be something created by another and communicated to the patentee. See 35 U.S.C. § 102(f); Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1334 (Fed. Cir. 2003). Plaintiffs were within their rights to argue to the jury that because Milwaukee and Moli worked together on them, the Moli cells could not be considered prior art in the first place. The jury was not required to believe them, see Milwaukee Elec. Tool, 2017 WL 4570787, at *4, but it did. And the jury was properly instructed that Section 102(f) prior art must be “information from non-inventors communicated to inventors.” (Docket #314 at 16). Rightfully, there was no suggestion by either party or in the Court's instructions that the mere existence of the confidentiality agreements or assignment disqualified the Moli cells as Section 102(f) prior art. See Milwaukee Elec. Tool, 2017 WL 4570787, at *4.

         2.2.2 Infringement

         Snap-On's evidentiary challenge to the infringement case is that the Court improperly excluded Horn's testimony about the purportedly unusual testing conditions to which Ehsani subjected the accused packs. (Docket #351-1 at 13-14). Specifically, Horn thinks it was inappropriate for Ehsani to test the packs without connecting them to a tool, as Snap-On specially designs its tools with protective circuitry installed in the tool itself that works in conjunction with similar circuitry in the pack. Id. Horn opined that testing a pack alone would skew the test results. Id.

         This was the subject of one of Snap-On's motions in limine that the Court addressed in a written pre-trial decision. Milwaukee Elec. Tool, 2017 WL 4570787, at *8-9. The ...

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