United States District Court, E.D. Wisconsin
MILWAUKEE ELECTRIC TOOL CORPORATION, METCO BATTERY TECHNOLOGIES LLC, AC MACAO COMMERCIAL OFFSHORE LIMITED, and TECHTRONIC INDUSTRIES CO. LTD., Plaintiffs,
SNAP-ON INCORPORATED, Defendant. MILWAUKEE ELECTRIC TOOL CORPORATION, METCO BATTERY TECHNOLOGIES LLC, AC MACAO COMMERCIAL OFFSHORE LIMITED, and TECHTRONIC INDUSTRIES CO. LTD., Plaintiffs,
SHOOK HARDY & BACON and MCDERMOTT, WILL & EMERY, LLP, Defendants.
Stadtmueller, U.S. District Court
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.
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.
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
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
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.
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).
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.
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.
Snap-On's Motion for Judgment as a Matter of Law
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.
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).
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.
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.
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). 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).
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.
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. 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.
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.
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.
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.
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.
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
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
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).
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.
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.
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
The Untested Packs
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.
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.
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.
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.
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
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).
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).
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.
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
Snap-On's Motion for New Trial
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).
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.
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).
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.
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.
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.
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
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.
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.
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