Milwaukee Electric Tool Corp v. Black & Decker Inc

1. Case Identification

• Case #: PGR2020-00007
• Patent #: 10,389,139
• Filed: November 19, 2019
• Petitioner(s): Milwaukee Electric Tool Corporation
• Patent Owner(s): Black & Decker Inc.
• Challenged Claims: 11-13

2. Patent Overview

• Title: Portable Power Supply System for Power Tool Battery Packs
• Brief Description: The ’139 patent describes a portable power supply system capable of both charging removable power tool battery packs and using power from those same battery packs to supply power to other electrical devices, such as corded power tools.

3. Grounds for Unpatentability

Ground 1: Claims 11-13 are anticipated by Zick under 35 U.S.C. § 102

• Prior Art Relied Upon: Zick (Patent 8,203,307).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner argued that Zick discloses every limitation of the challenged claims within a single embodiment. Zick describes a portable electrical component (a combination radio and battery charger) that functions as the claimed "charging and discharging container." This container includes a housing with a receptacle (44) configured to removably receive and electrically connect to a battery pack (64), which is identified as a slide-on power tool battery. Petitioner asserted that Zick’s power tool battery pack (64), when removed from the receptacle, is coupleable to a second electrical device (a power tool 71). When the battery pack is in the receptacle, a power output connector (DC outlet 390) is electrically coupleable to a first electrical device (e.g., a cell phone) to supply it with power from the battery pack.
  • For dependent claim 12, Petitioner contended that Zick’s "charging circuit portion 30" meets the charging circuit limitation. The discharging circuit limitation was met by Zick’s disclosure of an electrical circuit (28) that controls power supply from the battery to the DC outlet and incorporates by reference a patent describing a "deep discharge protection circuit."
  • For dependent claim 13, Petitioner argued that Zick’s power cord (31), which connects to an AC power source, meets the limitation of a power input connector configured to receive AC input power.

Ground 2: Claims 11-13 are anticipated by Fry under 35 U.S.C. § 102

• Prior Art Relied Upon: Fry (Patent 10,044,197).
• Core Argument for this Ground:
  • Prior Art Mapping: Petitioner asserted that Fry’s first embodiment discloses a portable power source that anticipates all challenged claims. Fry’s portable power device (10) is a container with a housing (22) and receptacles (ports 70, 72) for removably receiving and charging power tool battery packs (86, 90). Petitioner mapped these battery packs to the claimed "battery pack," and the power tools they operate to the "second electrical device." Fry’s device uses power from the docked battery packs to supply power to AC and DC peripheral devices (e.g., a smartphone) via its AC output (202) and DC outputs (194, 198). Petitioner argued these peripherals are the "first electrical device" and the outputs are the "power output connector."
  • For dependent claim 12, Petitioner argued that Fry’s disclosure of a first charging circuit (242) and microcontrollers within the battery packs meets the charging circuit limitation. The discharging circuit was allegedly disclosed as the inverter (246) and associated controller (234) that control the delivery of discharged power to the outputs.
  • For dependent claim 13, Petitioner mapped Fry’s AC input (222) to the claimed power input connector configured for an AC source.

Ground 3: Claims 11-13 are anticipated by Yeh under 35 U.S.C. § 102

• Prior Art Relied Upon: Yeh (Application # US 2008/0116748).

• Core Argument for this Ground:

  • Prior Art Mapping: Petitioner argued that Yeh’s multi-function power storage device anticipates the claims. Yeh’s device includes a main unit ("socket means 11") and a separable, rechargeable battery (12), which Petitioner mapped to the "battery pack." The main unit serves as the "charging and discharging container" that can charge the battery and power a first electrical device (e.g., a computer 3). The battery pack can be removed from the main unit and used to power a second electrical device (e.g., a camping lantern or PDA). Yeh’s sockets (115) were identified as the "power output connector."
  • For dependent claim 12, Petitioner contended that the ability to charge the battery when connected to the main unit demonstrated a charging circuit. Petitioner argued the discharging circuit was disclosed by the battery’s internal inverter and automatic switch, which control the output of stored power to appliances when commercial power is interrupted.
  • For dependent claim 13, Petitioner asserted that Yeh’s power plug (111), which inserts into an indoor AC socket, meets the limitation for an AC power input connector.

• Additional Grounds: Petitioner asserted as an alternative ground that claims 11-13 are obvious over Zick under §103. This ground relied on the same disclosures as the Zick anticipation ground but argued that, to the extent any feature was considered part of a different embodiment in Zick, a POSITA would have been motivated to combine them due to their interchangeability and the predictable results of doing so.

4. Relief Requested

• Petitioner requests institution of post-grant review and cancellation of claims 11-13 of the ’139 patent as unpatentable.