Black & Decker Inc. v. Positec USA Inc.

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

BLACK & DECKER INC. and BLACK & )

DECKER (U.S.) INC., ) Case No. 13 CV 3075

)

Plaintiff, ) Judge Joan B. Gottschall

v. )

)

POSITEC USA INC. and RW DIRECT, INC., )

)

Defendants. )

)

MEMORANDUM OPINION AND ORDER

Plaintiffs Black & Decker Inc. and Black & Decker (U.S.) Inc. (collectively “plaintiffs”)

allege that defendants Positec USA Inc. and RW Direct Inc. and collectively “defendants”)

infringe claim 16 of U.S. Patent No. 5,544,417 (sometimes “417 patent”) by selling certain

WORX®-branded products in the United States. See Compl. ¶¶ 17-44, ECF No. 1); see also

Pl.’s Resp. to Defs.’ Stmt. of Facts (“Resp. to SOF”) ¶¶ 1–6, 8 ECF No. 116 (describing the

parties and accused products). The patent-in-suit is entitled “Multi-Purpose Motor Mounting

System for a String Trimmer,” which is a power tool used to cut outdoor vegetation. See 417

patent col. 1, ll 1-2 ECF No. 24-1 at 6 (specification). Defendants have filed counterclaims for a

declaratory judgment of non-infringement, invalidity, and unenforceability. Ans. ¶¶ 10-11, 14-

15, 18-22, ECF No. 14.

Defendants’ motion for summary judgment of noninfringement is before the court.

“Evaluation of summary judgment of noninfringement is a two-part inquiry: first, a court

construes the scope and meaning of the asserted patent claims, and then compares the construed

claims to the accused product or process.” Medgraph, Inc. v. Medtronic, Inc., 843 F.3d 942, 949

(Fed. Cir. 2016) (citing Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009)).

Defendants raise a single argument. They contend that no reasonable jury could find

infringement of the “motor mounting plate” limitation in claim 16 of the 417 patent. Mem.

Supp. Mot. Summ. J. 1–2, 11–14, ECF No. 113. The text of Claim 16 follows with the language

at issue emphasized:

16. A method for assembling an outdoor power tool, the method comprising:

forming a first housing section having a circumferential groove formed in an

interior wall thereof;

forming a second housing section having a circumferential groove formed in

an interior wall thereof;

fixedly securing a motor mounting plate to a motor;

inserting a portion of said motor mounting plate into said circumferential

groove in said second housing section;

placing said first housing section against said second housing section to cause

a portion of said mounting plate to engage within said circumferential groove

in said interior wall of said first housing section, to thereby cause said

mounting plate to be supported at a plurality of positions by said

circumferential grooves, to thereby enable said motor to be supported within

said first and second housing sections without said motor contacting any

portion of said interior walls of said first and second housing sections; and

securing said first housing section to said second housing section.

417 patent col. 10, ll.11-31, Def.’s Ex. AECF No. 24-1 at 10 (emphasis added).

I. Claim Construction Rulings

The Federal Circuit and this court have previously construed separate terms of claim 16.

In 2016, the Federal Circuit reviewed the U.S. Patent Trial and Appeals Board’s resolution of inter

partes review proceeding concerning the 417 patent. Black & Decker, Inc. v. Positec USA, Inc.,

646 F. App’x 1019 (Fed. Cir. 2016) (unpublished). Upholding the board’s decision, the Federal

Circuit ruled that the terms “fixedly” and “fixedly securing” mean “fastened such that relative

movement is prevented.” Id. at 1024–25.

This court construed certain terms in claim 16 in 2018. In accordance with this court’s

Local Patent Rules, the parties submitted claim construction briefing, and the court construed four

contested terms of the 17 patent. See Black & Decker, Inc. v. Positec, LLC, No. 13-CV-3075, slip

op. (N.D. Ill. Sept. 20, 2018), available at ECF No. 97. The court construed the phrase “motor

mounting plate” as meaning “a motor mounting plate which is planar.”1 Id. at 9. That construction,

the court explained, best accounted for the language of the claims and the intrinsic evidence. Id.

at 9–11. Plaintiffs provided extrinsic evidence, such as a picture of a conventional dinner plate,

but the court found it unpersuasive. See id. at 11–12. Finally, the court rejected plaintiffs’

arguments that this construction excluded the preferred embodiments depicted in the 417 patent.

Id. at 13. Combining the claim construction rulings with the language of the 417 patent yields the

following step in claim 16: fastening a motor to a motor mounting plate which is planar such that

relative movement is prevented.

II. Comparison of Accused Products to the Claim

Whether a properly construed patent has been infringed is a question of fact, so “summary

judgment of noninfringement is proper when no reasonable factfinder could find that the accused

product contains every claim limitation or its equivalent.” Medgraph, Inc. v. Medtronic, Inc., 843

F.3d 942, 949 (Fed. Cir. 2016) (citations omitted). In making this determination, “all reasonably

disputed material facts and factual inferences are resolved in favor of the nonmovant,” the

plaintiffs here. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).

With these principles in mind, the court compares the accused products with the 417 patent

as construed above. Figures one, two, and three below depict preferred embodiments in the 417

patent. Item 40 corresponds to the “motor mounting plate,” which has been construed to mean a

1 The parties appear not to agree on the meaning of the term “planar.” They seem to think it is a factual issue for the

jury. The court is not so sure.

“motor mounting plate which is planar.” Black & Decker, Inc. v. Positec, No. 13-CV-3075, slip

op. at 9 (N.D. Ill. Sept. 20, 2018).

It is undisputed that the accused products use “two styles of motor mounting structures.”

Resp. to SOF § 9. Figures one and two illustrate the two styles. See id. (mages undisputed).

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Plaintiffs argue that a reasonable jury could find infringement because “the motor

mounting plates of the Accused Products have planar surfaces.” Resp. to Mot. Summ. J. 4, ECF

No. 115. They rely heavily on the infringement and rebuttal reports of their expert, Christine H.

Potter (“Potter”). See id. at 4-16; see also Potter Infringement Report, Pl.’s Tab 1, ECF No. 116-

2 pp. 1-27; Rebuttal Report, id. at 28-80; see also Resp. to SOF 4 10-18, 21).” Plaintiffs also

attempt to create a fact issue by pointing to portions of the reports of defendants’ expert, Dr. Glenn

Stevick (“Stevik.”). See Stevik Infringement Report, Defs.’ Tab P, ECF No. 117-14; Stevick

Invalidity Report, Pls’ Ex. 2, ECF No. 116-3. The court examines each report in turn.

A. Potter’s Infringement Report

A Black & Decker Vice President, Potter earned an undergraduate degree in mechanical

engineering. Potter Infringement Report 23. Regarding the highlighting in figures four and five,

Potter states, “Each of the motor mounting structures included a motor mounting plate (highlighted

in red below) and a portion (highlighted in green below) through which mounting screws were

passed into threaded features of the motors.” Potter Report 11. Above these images, Potter’s

report states, “As shown below, the motor mounting plates are planar.” Jd. at 12. The figures

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2 In paragraph 17 of plaintiffs’ response to defendants’ statement of undisputed material facts, plaintiffs object to

certain characterizations of Potter’s noninfringement report. The court construes the report in the light most

favorable to plaintiffs.

In their response, defendants assert that Potter provided “detailed factual evidence that at

least one side of the motor mounting plate is planar.”3 Resp. to Mot. to Dismiss 6. Potter’s

opinions do not create a fact issue for two reasons.

First, Potter offers no explanation of how she reached her conclusions. See id. at 11–12.

By highlighting the images, Potter implies two opinions: (1) that someone ordinarily skilled in the

art would consider the red highlighted portions to be motor mounting plates and (2) that the motor

mounting plates are planar. As the parties have not provided a definition of planar, neither does

Potter.

“In order for ‘an expert report to create a genuine issue of fact, it must provide not merely

... conclusions, but the basis for the conclusions.’” Bourke v. Conger, •639 F.3d 344, 348 (7th Cir.

2011) (quoting Vollmert v. Wis. Dep't of Transp., 197 F.3d 293, 298 (7th Cir.1999)) (other citation

omitted); see also Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1373–74 (Fed.Cir. 2008)

(applying standard to expert opinions on obviousness). The Seventh Circuit has repeatedly

admonished litigants: “An expert who supplies nothing but a bottom line supplies nothing of value

to the judicial process.” Cripe v. Henkel Corp., 858 F.3d 1110, 1113 (7th Cir. 2017) (quoting Mid-

State Fertilizer Co. v. Exchange Na’tl Bank of Chicago, 877 F.2d 1333, 1339 (7th Cir. 1989). A

bottom line, albeit one embodied in the color coding of an image, is all Potter supplies on pages

11 and 12 of her expert report, so those opinions do not create a genuine fact dispute requiring a

trial. See id. at 1110–11 (affirming summary judgment and exclusion of expert report which did

not explain the basis for its conclusions).

3 It is possible to read Potter’s report as meaning that green highlighting indicates a separate component of the motor

mounting structure distinct form the motor mounting plate. Plaintiff’s not advocate this reading in their briefing.

Second, Potter’s analysis does not grapple with the nature of claim 16. Claim 16 is a

method claim. “A method patent claims a number of steps; . . . the patent is not infringed unless

all the steps are carried out.” Limelight Networks, Inc. v. Akamai Techs., Inc., 572 U.S. 915, 921

(2014) (citation omitted). The step at issue here involves “fixedly securing a motor mounting plate

to a motor.” 417 patent Col. 10, ll. 17, ECF No. 24-1. As construed by the Federal Circuit, “fixedly

securing” means “fastening such that relative motion is prevented.” Black & Decker, Inc. v.

Positec USA, Inc., 646 F. App’x 1019, 1025 (Fed Cir. 2016).

Additionally, a pair of images in plaintiffs’ statement of additional facts, reproduced below

as figures 6 and 7, show that the ring-like structure at issue (which defendants call a flange) does

not extend in a plane. See Pls.’ SAF ¶ 6.

Again, Potter uses red highlighting in figures four and five above to indicate the motor

mounting plate and green to indicate “a portion” of the motor mounting plate through which screws

are passed. Potter Report 11. Figures six and seven below show that the highlighted portions of

figures four and five compromise a single, integrated piece (highlighted in blue) that is fastened to

the motor during assembly of the accused products (integrated motor mounting structure). See

Potter Infringement Report 11–12. Plaintiffs point to no evidence, and the court sees none, that

relative motion of the motor and this integrated motor mounting structure is possible once the two

pieces are fastened together. And plaintiffs do not even suggest that the integrated motor mounting

structure is flat. They and Potter maintain only that certain surfaces of the motor mounting

structures are flat. Pls.’ SAF p. 14 ¶ 9 (quoting Stevick Infringement Report ¶ 64); see also Resp.

to Mot. Summ. J. 4–9; Pls’ SAF p. 14 ¶ 10.

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For all of these reasons, when Potter’s report is viewed in the light most favorable to

plaintiffs, no reasonable jury could find that defendants perform the step of fastening a planar

motor mounting plate to the engine such that relative motion is prevented.

B. Stevick’s Report

Plaintiffs quote Stevick’s opinion expressed in his non-infringement report that “[a] person

of ordinary skill in the art would understand a ‘planar’ mounting plate to be a mounting plate

having a surface that extends in a plane.” Pls.’ Statement of Additional Facts SAF) ECF No. 116

at 14 4 9 (citing Stevick Non-Infringement Report 4 64). Plaintiffs cite nothing contradicting this

opinion. Rather, they build their argument around it, contending that Potter’s report demonstrates

that the accused products’ motor mounting structures have at least one surface that extends in a

plane. See Pls. Resp. to Mot. Summ. J. at 6–9. Defendants contend that this statement has been

taken out of context because Stevick opines specifically that the accused products do not practice

the motor mounting plate limitation. See id. ¶¶ 64–66. Regardless, as explained below, Stevick’s

invalidity report creates a fact issue concerning what a person skilled in the art would understand

a planar motor mounting plate to be.

Plaintiffs first challenge Stevick’s rebuttal analysis of Potter’s infringement report,

contending that it is flawed. See Resp. to Mot. Summ. J. 9–13. They submit that if Stevick’s

approach is applied to the preferred embodiments in the 417 patent (figure 8 is the original figure

in the patent; figure 9 is a modified version of this figure), then the embodiments are excluded

from claim 16 because they have “nonplanar” surfaces in the center, i.e., a small aperture. See

Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318 (Fed. Cir. 2013) (discussing rule

that claim constructions that exclude preferred embodiments are generally disfavored).

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As plaintiffs’ reliance on Accent Packaging, Resp. to Mot. Summ. J. 11, demonstrates,

they are effectively asking the court to revisit claim construction. This court declines to revisit

its claim construction rulings. See Solaia Tech. LLC v. ArvinMeritor, Inc., 361 F. Supp. 2d 797,

816 (N.D. IL. 2005) (declining to consider exhibit at summary judgment that effectively sought

to revisit claim construction by making 14 pages of new arguments); LoggerHead Tools, LLC vy.

Sears Holding Corporation, 328 F.Supp.3d 885, 896-97 (N.D. Ill. 2018) (discussing general

principles regarding revisiting claim construction rulings). Plaintiffs’ final argument has merit,

however. They point to Stevick’s opinions in his invalidity report that a claim in a prior art

patent, referred to as the “MACK patent,” disclosed a planar motor mounting plate. See Pls.’

SAF 4/§| 14-16; Stevick Invalidity Report {| 101, 182.

10

Stevick identified Item 45 in figure 10 below as a planar motor mounting plate. Item 45

is sufficiently similar to the integrated motor mounting structure in the accused products (see

figs. 6 and 7 above) for a jury to find infringement. Defendants do not argue otherwise. See

Reply 9-10. Defendants concede that Stevick identified item 45 in figure 10 below as a planar

motor mounting plate, but they contend that his opinion is irrelevant because he expressed it in

an invalidity report rather than in his non-infringement report. See Reply Supp. Mot. Summ. J.

9-10, ECF No. 117; Stevick Invalidity Report fj 101, 189.

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May the jury properly rely on Stevick’s opinions that item 45 is a planar motor mounting

plate even though he expressed them in an invalidity report? Defendants answer no, citing one

case. Reply 10. The case defendants cite explains that non-infringement and invalidity are

separate and distinct issues, but it does not decide the evidentiary question of relevance at all.

See Pandrol USA, LP vy. Airboss Railway Prods., Inc., 320 F.3d 1354, 1364-66 (Fed. Cir. 2003);

Fed. R. Evid. 401, 402 (defining relevance in the evidentiary sense). The Federal Circuit

confronted a waiver problem in Pandrol: the district court held that the defendants had waived

an invalidity defense they wanted to present at trial by omitting the issue from a pretrial

summary judgment motion. See id. at 1357. The Federal Circuit held that “the issue of

11

invalidity is a separate issue from infringement, and an alleged infringer's failure to raise it in

opposition to a motion for summary judgment of infringement is not a waiver.” Id. at 1365.

In his invalidity report, Stevick specifically opines on obviousness, an invalidity issue,

and expresses his views on how a person of ordinary skill in the art would have understood the

teachings of the MAC patent. Stevick Report ¶ 36-7. When adequately supported, this is an

appropriate subject for an expert opinion on invalidity. See, e.g., Meyer Intellectual Props. Ltd.

v. Bodum, Inc., 690 F.3d 13544, 1377 (Fed. Cir. 2012) (holding expert opinion on obviousness

was admissible and noting that the expert adequately defined what a prior art patent would teach

a person skilled in the art). More importantly, the Federal Circuit has held that a jury may

properly consider admissible expert testimony, such as scientific testimony, on how one skilled

in the art would understand terms used in the patent to assist it in analyzing an infringement

claim. Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc, 249 F.3d 1341,

1349 (Fed. Cir. 2001) (holding that district court properly admitted competing scientific

testimony and stating that “it would contravene fundamental principles of due and fair process to

withhold evidence of disparate scientific opinion relevant to the findings—in this case of

infringement vel non—required of the jury); see also First Years, Inc. v. Munchkin, Inc, 575

F.Supp.2d 1002, 1008 (W.D. Wis. 2008) (holding opinions expressed in expert’s invalidity

report were “also . . . relevant to infringement”). Stevick’s invalidity opinions, viewed

favorably to the plaintiffs, permit a finding that item 45 in figure 10 is a proper comparator for a

planar motor mounting plate. His opinions are therefore relevant, and they create genuine fact

issue for trial.4

4 Defendants have not argued that Stevick’s opinions are inadmissible except on the grounds discussed in the text.

The court implies no view on any evidentiary issues which may be raised at a later stage of this case.

III. CONCLUSION

For the reasons stated, defendant’s motion for summary judgment of invalidity is denied.

Dated: February 20, 2020 /s/

Joan B. Gottschall

United States District Judge