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Milwaukee Elec. Tool Corp. v. Snap-On Inc.

United States District Court for the Eastern District of Wisconsin

October 12, 2017, Decided; October 12, 2017, Filed

Case No. 14-CV-1296-JPS

Opinion

ORDER

This is a patent case about lithium-ion batteries used in power tools. Trial is scheduled to begin on Monday, October 16, 2017. The parties have filed voluminous motions in limine and Daubert motions in anticipation of trial. See (Docket #234, #235, #238, #241, [*2]  #242, #248, #250, #264).

During the final pretrial conference, held on October 10, 2017, the Court indicated that it would take up each disputed issue before selection of the jury, or when such matters arose during trial, as appropriate. See (Docket #271). At the parties' request, however, the Court now issues a decision on the most pertinent of the pretrial motions in an effort to streamline the parties' trial preparation and perhaps aid their efforts to seek a mutually agreeable pretrial resolution of this matter. See (Docket #272). The Court will address each motion in turn.

1. Moli Evidence as Prior Art for Purposes of Obviousness

Section 102 of the Patent Act establishes certain types of prior art that may be used in various ways to attack the validity of a patent.1 Section 102(f) defines one such type of prior art. It provides that a person is not eligible for a patent if "he did not himself invent the subject matter sought to be patented." 35 U.S.C. § 102(f) (2006). Put differently, one who derives an invention from another cannot patent it. Price v. Symsek, 988 F.2d 1187, 1190 (Fed. Cir. 1993). In order to establish derivation, the challenger must prove, by clear and convincing evidence, "both prior conception of the invention by another and communication of that conception [*3]  to the patentee." Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332, 1334 (Fed. Cir. 2003); Cumberland Pharm. Inc. v. Mylan Institutional LLC, 846 F.3d 1213, 1218 (Fed. Cir. 2017).

"Conception is the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention, as it is therefore to be applied in practice." Singh v. Brake, 317 F.3d 1334, 1340, 48 Fed. Appx. 766 (Fed. Cir. 2003). A conception must encompass all limitations of the claimed invention. Id. Critically, "derivation is not proved by showing conception and communication of an idea different from the claimed invention even where that idea would make the claimed idea obvious." Cumberland Pharm., 846 F.3d at 1219.

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2017 U.S. Dist. LEXIS 168504 *; 2017 WL 4570787

MILWAUKEE ELECTRIC TOOL CORPORATION, METCO BATTERY TECHNOLOGIES LLC, AC (MACAO COMMERCIAL OFFSHORE) LIMITED, and TECHTRONIC INDUSTRIES CO. LTD., Plaintiffs, v. SNAP-ON INCORPORATED, Defendant.

Prior History: Milwaukee Elec. Tool Corp. v. Hilti, Inc., 2015 U.S. Dist. LEXIS 54717 (E.D. Wis., Apr. 27, 2015)

CORE TERMS

patent, invention, pack, battery, invalidity, estoppel, infringement, inventor, limine, Amp, reexaminations, misleading, convinced, skill