UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD. HILTI, INC., Petitioner

UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD HILTI, INC., Petitioner v. MILWAUKEE ELECTRIC TOOL CORPORATION, Patent Owner Inter Partes Review No.: To Be Assigned U.S. Patent No. 7,554,290 PETITION FOR INTER PARTES REVIEW OF U.S. PATENT 7,554,290 UNDER 35 U.S.C. 311 AND 37 C.F.R. 42.100

I. INTRODUCTION... 1 II. OVERVIEW OF THE ʼ290 PATENT... 2 A. The 290 Patent Specification... 2 B. Summary of the Prosecution History of the 290 Patent... 4 C. Summary of the Prosecution History of the Parent 585 Patent... 6 D. Summary of the Inter Partes Reexamination of the 290 Patent... 6 E. Summary of the Ex Parte Reexamination of the 290 Patent...10 F. The 290 Patent Claims Are Not Entitled to Claim Priority to the Provisional Applications Filed on November 22, 2002...11 III. CLAIM CONSTRUCTION...12 A. a housing connectable to and supportable by the hand held power tool...14 B. battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps...15 C. nominal voltage...20 IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED...22 A. Statutory Grounds of Challenge...22 B. Overview of the Cited Art...23 V. DETAILED EXPLANATION OF THE CHALLENGE...28 A. Ground 1: Claims 1, 4 and 6 11 Are Obvious Over Takano in View of Saft with Claims 2, 3 and 5 Being Obvious in Further View of Yanai...28 B. Ground 2: Claims 1 11 Are Obvious Over Takano and Adachi...40 C. Ground 3: Claims 1 11 Are Obvious Over Takano and Yanai...46 D. Ground 4: Claims 1 11 Are Obvious Over Admitted Prior Art and Yanai...52 VI. MANDATORY NOTICES...56 A. Real Parties-In-Interest (37 C.F.R. 42.8(b)(1))...56 B. Related Matters (37 C.F.R. 42.8(b)(2))...56 C. Identification of Counsel (37 C.F.R. 42.8(b)(3))...57 i

VII. GROUNDS FOR STANDING AND PROCEDURAL STATEMENT..57 VIII. CONCLUSION...58 ii

LIST OF EXHIBITS Exhibit No. Description of Exhibit Patents and Assignment Information Ex. 1001 Ex. 1002 Ex. 1003 Ex. 1004 Ex. 1005 Ex. 1006 U.S. Patent No. 7,999,510 ( the 510 Patent ) USPTO Assignments on the Web for the 510 Patent U.S. Patent No. 7,944,173 ( the 173 Patent ) USPTO Assignments on the Web for the 173 Patent U.S. Patent No. 7,554,290 ( the 290 Patent ) USPTO Assignments on the Web for the 290 Patent Expert Declarations Ex. 1007 Ex. 1008 Ex. 1009 Ex. 1010 Ex. 1011 Ex. 1012 Reserved Reserved Reserved Reserved Declaration of Dr. K. M. Abraham in Support of Petition for Inter Partes Review of U.S. Patent No. 7,554,290 ( Abraham Decl. ) Declaration of Dr. Quinn C. Horn in Support of Petition for Inter Partes Review of U.S. Patent No. 7,554,290 ( Horn Decl. ) Provisional Applications Ex. 1013 Ex. 1014 Ex. 1015 Ex. 1016 U.S. Provisional Appl. No. 60/428,356 ( the 356 Application ) U.S. Provisional Appl. No. 60/428,358 ( the 358 Application ) U.S. Provisional Appl. No. 60/428,450 ( the 450 Application ) U.S. Provisional Appl. No. 60/428,452 ( the 452 Application ) iii

Ex. 1017 Ex. 1018 Ex. 1019 Ex. 1020 U.S. Provisional Appl. No. 60/440,692 ( the 692 Application ) U.S. Provisional Appl. No. 60/440,693 ( the 693 Application ) U.S. Provisional Appl. No. 60/523,712 ( the 712 Application ) U.S. Provisional Appl. No. 60/523,716 ( the 716 Application ) Documents Relating to Prosecution of the 264 Application That Issued as the ʼ510 Patent Ex. 1021 Ex. 1022 Ex. 1023 Ex. 1024 U.S. Patent Appl. No. 13/014,264 ( the ʼ264 Application ) Excerpt from the file history of the ʼ264 Application: March 3, 2011 Non Final Office Action ( 3/3/11 Action ) Excerpt from the file history of the ʼ264 Application: April 29, 2011 Terminal Disclaimer ( 4/29/11 Terminal Disclaimer ) Excerpt from the file history of the ʼ264 Application: June 9, 2011 Notice of Allowance ( 6/9/11 Notice of Allowance ) Documents Relating to Prosecution of the 088 Application That Issued as the ʼ173 Patent Ex. 1025 Ex. 1026 Ex. 1027 Ex. 1028 Ex. 1029 Ex. 1030 U.S. Patent Appl. No. 12/331,088 ( the ʼ088 Application ) Excerpt from the File History of the 088 Application: May 10, 2010 Non Final Office Action ( 5/10/10 Action ) Excerpt from the File History of the 088 Application: November 5, 2010 Applicant Response ( 11/5/10 Applicant Resp. ) Excerpt from the File History of the 088 Application: December 27, 2010 Final Office Action ( 12/27/10 Action ) Excerpt from the File History of the 088 Application: January 24, 2011 Terminal Disclaimer ( 1/24/11 Terminal Disclaimer ) Excerpt from the File History of the 088 Application: February 17, 2011 Notice of Allowance ( 2/17/2011 Notice of Allowance ) iv

Documents Relating to Prosecution of the 829 Application That Issued as the ʼ290 Patent Ex. 1031 Ex. 1032 Ex. 1033 Ex. 1034 U.S. Patent Appl. No. 11/780,829 ( the 829 Application ) Excerpt from the File History of the 829 Application: March 19, 2009 Meyer Declaration ( 3/19/09 Meyer Decl. ) Excerpt from the File History of the 829 Application: April 14, 2009 Non Final Office Action ( 4/14/09 Action ) Excerpt from the File History of the 829 Application: May 27, 2009 ( 5/27/09 Notice of Allowance ) Documents Relating to Prosecution of the 800 Application Ex. 1035 Ex. 1036 Ex. 1037 U.S. Patent Appl. No. 10/721,800 ( the 800 Application ) Excerpt from the File History of the 800 Application: March 2, 2007 Meyer Declaration ( 3/2/07 Meyer Decl. ) Excerpt from the File History of the 800 Application: June 18, 2007 ( 6/18/07 Notice of Allowance ) Documents Relating to Inter Partes Proceedings on the ʼ510 Patent Ex. 1038 Ex. 1039 Ex. 1040 Ex. 1041 Ex. 1042 Excerpt from the Inter Partes Reexamination of the 510 Patent: December 9, 2011 Request for Inter Partes Reexamination ( 12/9/11 Request ) Excerpt from the Inter Partes Reexamination of the 510 Patent: February 23, 2012 Order Granting Reexamination Request ( 2/23/12 Order ) Excerpt from the Inter Partes Reexamination of the 510 Patent: February 23, 2012 Non-Final Office Action ( 2/23/12 Action ) Excerpt from the Inter Partes Reexamination of the 510 Patent: April 23, 2012 Patent Owner Response to Non-Final Office Action ( 4/23/12 Owner Resp. ) Excerpt from the Inter Partes Reexamination of the 510 Patent: v

August 28, 2012 Action Closing Prosecution ( 8/28/12 ACP ) Ex. 1043 Ex. 1044 Ex. 1045 Ex. 1046 Ex. 1047 Excerpt from the Inter Partes Reexamination of the 510 Patent: February 20, 2013 Right of Appeal Notice ( 2/20/13 RAN ) Excerpt from the Inter Partes Reexamination of the 510 Patent: July 9, 2013 Appeal Brief ( 7/9/13 Appeal Br. ) Excerpt from the Inter Partes Reexamination of the 510 Patent: October 2, 2013 Action Closing Prosecution ( 10/2/13 ACP ) Excerpt from the Inter Partes Reexamination of the 510 Patent: November 22, 2013 Right of Appeal Notice ( 11/22/13 RAN ) Excerpt from the Inter Partes Reexamination of the 510 Patent: January 23, 2014 Notice of Intent to Issue a Reexamination Certificate ( 1/23/14 NIRC ) Documents Relating to Inter Partes Proceedings on the ʼ173 Patent Ex. 1048 Ex. 1049 Ex. 1050 Ex. 1051 Ex. 1052 Ex. 1053 Ex. 1054 Excerpt from the Inter Partes Reexamination of the 173 Patent: December 9, 2011 Request for Inter Partes Reexamination ( 12/9/11 Request ) Excerpt from the Inter Partes Reexamination of the 173 Patent: February 27, 2012 Order Granting Reexamination Request ( 2/27/12 Order ) Excerpt from the Inter Partes Reexamination of the 173 Patent: February 27, 2012 Non-Final Office Action ( 2/27/12 Action ) Excerpt from the Inter Partes Reexamination of the 173 Patent: April 27, 2012 Patent Owner Response to Non-Final Office Action ( 4/27/12 Owner Resp. ) Excerpt from the Inter Partes Reexamination of the 173 Patent: October 19, 2012 Action Closing Prosecution ( 10/19/12 ACP ) Excerpt from the Inter Partes Reexamination of the 173 Patent: April 25, 2013 Right of Appeal Notice ( 4/25/13 RAN ) Excerpt from the Inter Partes Reexamination of the 173 Patent: vi

July 29, 2013 Appeal Brief ( 7/29/13 Appeal Br. ) Ex. 1055 Ex. 1056 Ex. 1057 Excerpt from the Inter Partes Reexamination of the 173 Patent: March 27, 2014 Action Closing Prosecution ( 3/27/14 ACP ) Excerpt from the Inter Partes Reexamination of the 173 Patent: May 8, 2014 Right of Appeal Notice ( 5/8/14 RAN ) Excerpt from the Inter Partes Reexamination of the 173 Patent: June 20, 2014 Notice of Intent to Issue a Reexamination Certificate ( 6/20/14 NIRC ) Documents Relating to Inter Partes Proceedings on the ʼ290 Patent Ex. 1058 Ex. 1059 Ex. 1060 Ex. 1061 Ex. 1062 Ex. 1063 Ex. 1064 Ex. 1065 Ex. 1066 Excerpt from the Inter Partes Reexamination of the 290 Patent: December 9, 2011 Request for Inter Partes Reexamination ( 12/9/11 Request ) Excerpt from the Inter Partes Reexamination of the 290 Patent: January 24, 2012 Order Granting Reexamination Request ( 1/24/12 Order ) Excerpt from the Inter Partes Reexamination of the 290 Patent: January 24, 2012 Non-Final Office Action ( 1/24/12 Action ) Excerpt from the Inter Partes Reexamination of the 290 Patent: March 26, 2012 Patent Owner Response to Non-Final Office Action ( 3/26/12 Owner Resp. ) Excerpt from the Inter Partes Reexamination of the 290 Patent: August 28, 2012 Action Closing Prosecution ( 8/28/12 ACP ) Excerpt from the Inter Partes Reexamination of the 290 Patent: February 20, 2013 Right of Appeal Notice ( 2/20/13 RAN ) Excerpt from the Inter Partes Reexamination of the 290 Patent: June 24, 2013 Appeal Brief ( 6/24/13 Appeal Br. ) Excerpt from the Inter Partes Reexamination of the 290 Patent: October 9, 2013 Action Closing Prosecution ( 10/9/13 ACP ) Excerpt from the Inter Partes Reexamination of the 290 Patent: vii

November 21, 2013 Right of Appeal Notice ( 11/21/13 RAN ) Ex. 1067 Excerpt from the Inter Partes Reexamination of the 290 Patent: January 24, 2014 Notice of Intent to Issue a Reexamination Certificate ( 1/24/14 NIRC ) Documents Relating to Ex Parte Proceedings on the ʼ290 Patent Ex. 1068 Ex. 1069 Ex. 1070 Excerpt from the Ex Parte Reexamination of the 290 Patent: December 12, 2011 Request for Reexamination ( 12/12/11 Request ) Excerpt from the Ex Parte Reexamination of the 290 Patent: January 26, 2012 Order Granting Reexamination Request ( 1/26/12 Order ) Excerpt from the Ex Parte Reexamination of the 290 Patent: September 10, 2012 Notice of Intent to Issue a Reexamination Certificate ( 9/10/12 NIRC ) Prior Art and Other Ex. 1071 Ex. 1072 Ex. 1073 Ex. 1074 Ex. 1075 Ex. 1076 Ex. 1077 Ex. 1078 Gunther, Judith Anne, Unplugged!, Popular Science, December 1996 ( Unplugged! ) U.S. Patent Publication No. US 2003/0096158, May 22, 2003 ( Takano ) Japanese Patent Application No. P2000-090982, March 31, 2000 ( Adachi ) with certified English translation Japanese Patent Application No. 2001-118569, April 27, 2001 ( Yanai ) with certified English translation Saft, Medium Prismatic lithium-ion batteries, Summer 2001 ( Saft ) Excerpt of David Linden & Thomas Reddy s Handbook of Batteries: Third Edition (2001) ( Linden ) U.S. Patent No. 6,850,041 ( Takano ʼ041 ) U.S. Patent No. 6,727,679 ( Kovarik ) viii

Ex. 1079 Ex. 1080 Ex. 1081 Ex. 1082 Ex. 1083 U.S. Patent No. 4,927,021 ( Taylor ) Stockstad, T. et al., A Micropower Safety IC for Rechargeable Lithium Batteries, IEEE 1996 Custom Integrated Circuits Conference (1996) ( Stockstad ) Juzkow, M., Development of a BB-2590/U rechargeable lithium-ion battery, 80 Journal of Power Sources 286-292 (1999) ( Juzkow ) December 11, 2012 Decision and Order on Claim Construction, Milwaukee Electric Tool Corporation et al. v. Hitachi Koki Co., Ltd. et al., Case No. 2-09-cv-00948, Dkt. No. 108 (E.D. Wis.) ( 12/11/12 Order ) January 29, 2015 Milwaukee Electric Tool Corporation s Amended Answer to Counterclaim, Milwaukee Electric Tool Corporation et al. v. Chervon North America, Inc., Case No. 2-14-cv-01289, Dkt. No. 26 (E.D. Wis.) ( 1/29/15 Amended Answer ) Ex. 1084 U.S. Consumer Product Safety Commission Press Release (July 10, 2007) re Milwaukee Electric Tool Co. Battery Recall ( Safety Recall Notice ) Ex. 1085 Ex. 1086 Ex. 1087 E-mail from McGraw-Hill (January 6, 2015) regarding Linden publication date Benchmark Products from Texas Instruments (bq2058), Lithium Ion Pack Supervisor for 3 and 4-Cell Packs (July 2000) Benchmark Products from Texas Instruments (bq2040), Gas Gauge IC with SMBus Interface, (June 1999) Ex. 1088 Duracell and Intel Smart Battery Data Specification, Revision 1.0, Release A (February 15, 1995) Ex. 1089 Ex. 1090 Ex. 1091 March 26, 2012 Declaration of Dr. George Blomgren in Support of Inter Partes Reexamination of the 290 Patent ( 3/26/12 Blomgren Decl. ) March 26, 2012 Declaration of Dr. Mehrdad ( Mark ) Ehsani in Support of Inter Partes Reexamination of the 290 Patent ( 3/26/12 Ehsani Decl. ) Lanz, M. et al., Large-Agglomerate-Size Lithium Manganese Oxide ix

Spinel with High Rate Capability for Lithium-Ion Batteries, 147(11) Journal of the Electrochemical Society, 3997-4000 (2000) ( Lanz ) Ex. 1092 Ex. 1093 Ex. 1094 Ex. 1095 Ex. 1096 Ex. 1097 Horiba, T. et al., Manganese type lithium battery for pure and hybrid electric vehicles, 97-98 Journal of Power Sources 719-21 (2001) ( Horiba ) Tanaka, T. et al., Year 2000 R&D status of large-scale lithium ion secondary batteries in the national project of Japan, 97-98 Journal of Power Sources 2-6 (2001) ( Tanaka ) Dremel Operating Safety Instructions Model 800 Cordless Rotary Tool (2003) ( Dremel Manual ) Bosch Press Release, Ixo by Bosch Replaces Screwdriver : The First Cordless Screwdriver with Lithium Ion Battery (August 2003) ( Bosch Driver ) Bosch Press Release, A world first from Bosch: Prio the first multi-sander with a lithium-ion battery (August 2004) ( Bosch Sander ) MAX Press Release announcing MAX Lithium-Ion Battery Equipped Rechargeable Hammer Drill PJ-R201-BC (January 19, 2005) ( Max Hammer ) and certified translation x

Pursuant to 35 U.S.C. 311 and 37 C.F.R. 42.100, Petitioner Hilti, Inc. respectfully requests inter partes review ( IPR ) of claims 1-11 of U.S. Patent No. 7,554,290 ( the 290 Patent ) (Exhibit ( Ex. ) 1005). The United States Patent and Trademark ( USPTO ) assignment records indicate that the applicants of the 290 Patent assigned their rights to Milwaukee Electric Tool Corporation ( Milwaukee ) (Ex. 1006). Thus, for the purpose of this Petition, Petitioner assumes that Milwaukee is the patent owner. I. INTRODUCTION Hand held power tool users have long preferred rechargeable cordless tools and the freedom of movement and independence from electrical outlets that they provide. Initially, rechargeable cordless power tools were powered by nickelbased chemistry batteries, primarily nickel-cadmium ( NiCd ) batteries. Over the last 20 years, however, lithium-based chemistry batteries have begun to supplant nickel-based batteries due to lithium batteries superior performance (higher capacity per unit battery weight), particularly as the cost of lithium-based batteries has steadily declined. Cordless power tools are but one example of the world s transition to lithium-based batteries, as virtually all consumer rechargeable battery applications have or are in the process of shifting to lithium (e.g., laptop computers, mobile phones, cameras, electric vehicles, etc.). Cordless power tool manufacturers, like other consumer electronics 1

manufacturers, recognized the benefits of lithium and began using lithium in smaller tools. As more powerful lithium batteries became available, these batteries were incorporated into larger tools to satisfy the ever-present market demand for more powerful and lighter battery-powered tools. Few things would have been more obvious than to do what the patent owner will surely contend is somehow inventive, i.e., apply the latest available high power lithium-based batteries in prior art cordless power tools that were already using lithium-based batteries. That those of ordinary skill in the art were highly motivated to (and in fact, did) combine known power tools with the latest lithiumbased battery cells is evidenced by the fact that several power tool manufacturers completed their typically multi-year-long tool development and qualification processes and at roughly the same time (circa 2005-2006) introduced higher-power battery packs to the market with the latest available generation of lithium batteries. The claims of the 290 Patent at best amount to no more than a restatement of this obvious evolution, and therefore do not meet the requirements of 35 U.S.C. 103(a) and must be canceled. II. OVERVIEW OF THE ʼ290 PATENT A. The 290 Patent Specification As noted above, the 290 Patent purports to describe a battery pack for power tools. (Ex. 1005, 290 Patent, at 5:40-47, 12:14-22). The described battery 2

pack uses a number of battery cells to generate an electric current (id., at 5:48-61, 12:18-21), and the battery cells are supported by a housing that is connected to a power tool (id., at 5:48-50, 12:16-17). FIGS. 36-40 of the 290 Patent depict prior art rechargeable battery packs, composed of multiple cells that are intended for use with a hand held power tool (such as that depicted in Fig. 11A 1 ) as well as various pack-to-tool latching mechanisms. (Id., at 1:44-2:22) (collectively, FIGS. 36 40 and corresponding description at 1:44-2:22, the Applicant s Admitted Prior Art or AAPA ). Although the specification goes on to promise disclosure of an invention that solves many problems associated with the prior art NiCd or NiMH batteries/cells (id., at 2:23-3:20), it in fact teaches little more than substituting higher-power Lichemistry battery cells in place of NiCd or NiMH cells in essentially the same battery pack structure. In connection with FIGS. 1-9, the 290 Patent describes an inventive battery pack that looks remarkably like the Applicant s Admitted Prior Art (FIGS. 36-40), and even uses the same illustrative tool and battery charger (FIGS. 11-12, 1 The drill 34 in Fig. 11A to which the admitted prior art battery pack is said to be connectable is strikingly similar to the drill 300 in Fig. 55 to which the claimed battery pack 30 is connected. 3

respectively) to depict the use and recharging of either type of cell/battery, i.e., Lichemistry or NiCd/NiMH. Tellingly, the 290 Patent even acknowledges that the battery cells may be any rechargeable battery cell chemistry type, such as, for example, nickel-cadmium battery (NiCd), nickel metal-hydride (NiMH), Lithium (Li), Lithium-ion (Li-ion), other Lithium based chemistry, other rechargeable battery based chemistry, etc. (Id., at 5:62-66). The 290 Patent goes on to state that various different cell chemistries can be used, of different size/weights and having varying parallel and series interconnections. (Id., at 6:4-10:12). Finally, the 290 Patent summarily states that the battery pack can supply an average discharge current that is equal to or greater than approximately 20A, and can have an ampere-hour capacity of 3.0 A-h, without any explanation of how it does so, or what battery/cell structures provide the stated capabilities. (Id., at 10:23-26). B. Summary of the Prosecution History of the 290 Patent The 290 Patent issued from U.S. Application No. 11/780,829 ( the 829 Application ) (Ex. 1031), which was filed on July 20, 2007. The 829 Application was a continuation of U.S. Application No. 10/721,800 ( the 800 Application ) (Ex. 1035), which in turn was filed on November 24, 2003, and issued on August 7, 2007 as U.S. Patent No. 7,253,585 ( the 585 Patent ). The 290 Patent also claims priority to several provisional applications filed on November 22, 2002, January 17, 2003, and November 19, 2003, respectively. (Exs. 1013-20). 4

During the prosecution of the 829 Application that issued as the 290 Patent, Gary Meyer, one of the inventors, submitted a declaration under 37 C.F.R. 1.132, in which he admitted that he received and tested several lithium-ion battery packs specifically designed for power tools from E-One Moli Energy (Canada) Ltd. ( E-One ) in the summer of 2001. (Ex. 1032, 3/19/09 Meyer Decl.). The E-One lithium-ion battery pack included a plastic housing with five matched lithium-ion rechargeable cells. (Id., at 4). According to Meyer, the cells were connected in series and had nominal charged voltages of approximately 4.2V. (Id.). Though the prior art E-One battery packs were virtually identical to those claimed in the 290 Patent, Meyer argued that they were not suitable for use in power tools because they could not sustain a 20 amp discharge current for longer than a minute without a drop-off in voltage (requirements that are not found anywhere in the ʼ290 Patent). (Id., at 7). Meyer, however, failed to explain how the claimed invention addressed these alleged problems in the E-One prototypes, or why such unclaimed features were otherwise relevant to the claimed invention. After reviewing Meyer s March 2009 declaration, the Examiner initially confused the E-One prototypes for the claimed invention and rejected the claims as directed to inoperable subject matter under 35 U.S.C. 101. (Ex. 1033, 04/14/09 Action, at 2). However, after the applicants represented that the claimed invention was different from the E-One prototypes, and coupled with the statements in 5

Meyer s declaration, the Examiner ultimately allowed the claims to issue as part of the 290 Patent. (Ex. 1034, 5/27/09 Notice of Allowance). C. Summary of the Prosecution History of the Parent 585 Patent The 290 Patent claims priority to the 800 Application, which issued as the 585 Patent. During prosecution of the 800 Application, inventor Meyer submitted a declaration under 37 C.F.R. 1.132 dated February 2007 representing, among other things, that [t]he conventional view in the industry was that... lithium [battery chemistry] was too unstable for use in corded tool applications. (Ex. 1036, 3/2/07 Meyer Decl., at 6). Meyer notably did not disclose to the Examiner in the 800 Application that he had personally tested lithium power tool battery packs developed by E-One as early as 2001, apparently without any battery stability issues manifesting themselves. Relying on Meyer s misleading characterizations, the Examiner ultimately allowed the claims of the 800 Application to issue. (Ex. 1037, 6/18/07 Notice of Allowance; see supra II.B; Ex. 1032). D. Summary of the Inter Partes Reexamination of the 290 Patent On October 1, 2009, Milwaukee sued Hitachi Koki Co., Ltd. and Hitachi Koki U.S.A., Ltd. (collectively Hitachi ) for allegedly infringing several patents, including the 290 Patent (Milwaukee et. al. v. Hitachi Ltd., et. al., Case No. 2-09- cv-00948 (E.D. Wis.), filed on October 1, 2009 ( the Hitachi Litigation )). Hitachi 6

then requested an inter partes reexamination of claims 1-11 of the 290 Patent on December 9, 2011 (Ex. 1058, 12/9/11 Request), which the PTO granted on January 24, 2012 (Ex. 1059, 1/24/12 Order). During this reexamination, the Examiner considered: (1) whether the 290 Patent claims were entitled to the priority date of the provisional applications or the parent 800 Application (id., at 3-6); (2) whether the identified prior art anticipated the 290 Patent claims or made it obvious to use lithium-ion cells in a hand held power tool battery pack, as claimed in the 290 Patent (id., at 7-8). (1) Priority Date: With respect to the 290 Patent s priority date, the Examiner first determined that the claims were entitled, at best, to the July 20, 2007 filing date of the 829 Application that issued as the 290 Patent. (Id., at 3). The Examiner explained that the provisional patent applications filed on November 22, 2002 do not in any way discuss or mention battery cells producing an average discharge of greater than or equal approximately 20 amps and fail to provide any written description for this limitation. (Id., at 3-4). The Examiner also found that the parent 800 Application does not enable a person of ordinary skill to make or use a battery pack capable of such a discharge current. (Id., at 6). In response, Milwaukee did not identify any written description in the provisional applications to support a priority date of November 22, 2002. Instead, Milwaukee focused on trying to convince the Examiner that, as of November 24, 7

2003, the priority applications sufficiently described and enabled battery cells that could generate approximately 20 amps of average discharge current. To do so, Milwaukee did not point to any clear, specific teachings of any novel battery pack features in the specification, but instead relied on expert declarations to support an argument that no such detail was necessary because the specification addressed four so-called foundational design considerations that would have to be considered when developing a rechargeable battery pack: (1) cell chemistry, (2) cell geometry and size, (3) battery pack management; and (4) battery pack design. (Ex. 1061, 3/26/12 Owner Resp., at 3-14). The patent owner also argued secondary considerations of non-obviousness, asserting its V28 battery pack met a long-felt need where others had failed. (Ex. 1061, 3/26/12 Owner Resp., at 32-36). Far from creating a breakthrough, Milwaukee was not even the first company to commercialize a lithium-based battery pack for power tools. (Ex. 1012, Horn, at 60 (identifying various Lithium-based power tools introduced in 1999-2005)). Thus, Milwaukee s V28 battery pack simply followed other Lithium-based tools into the market, once battery cell manufacturers had developed more powerful versions of the existing Lithium-based battery cells. (Id.) Milwaukee did not identify any teaching in the specification that would explain how or why these four design considerations which are merely basic 8

mechanical and electrical considerations well known in battery pack design were in any way unique or inventive. (Id., at 29-32). Nor are any of these four design considerations included in any form in independent claim 1, for example, of the 290 Patent. (Id., at 33). In response to Milwaukee s representations, the Examiner determined that because the applicants took a known battery chemistry, adjusted the size to provide higher power, and used a known geometry, i.e., because the applicants did not invent[] Li-based batteries, battery packs, or using battery packs with hand held power tools, the 290 Patent necessarily relied on prior art battery designs, and therefore it was not necessary to explain from scratch how to make a battery cell because this is not what was invented. (Ex. 1062, 8/28/12 ACP, at 11-12). The Examiner thus determined that the 290 Patent claims were sufficiently enabled as of the November 24, 2003 filing date of the parent 800 Application, without revisiting his earlier finding that the November 22, 2002 provisional applications failed to provide sufficient written description. (Id., at 13). (2) Prior Art Rejections: The Examiner held that numerous prior art references of record disclosed lithium-ion cells that a person of ordinary skill in the art would have found obvious to use in a battery pack for a hand held power tool. (Ex. 1060, 1/24/12 Action, at 6-7). Despite Milwaukee s attempts to distinguish the numerous cited prior art references, the Examiner continued to reject all of the 9

claims in an action closing prosecution (Ex. 1062, 8/28/12 ACP, at 2) and issued a right of appeal notice. (Ex. 1063, 2/20/13 RAN, at 1). Milwaukee appealed, filing its appeal brief on June 24, 2013. (Ex. 1064, 06/24/13 Appeal Br.). However, before Hitachi s responsive appeal brief was due, Milwaukee entered into a settlement agreement with Hitachi to dismiss the district court litigation and have Hitachi cease its challenges of Milwaukee s asserted patents, including the 290 Patent, before the USPTO. Having been provided with no response to Milwaukee s appeal brief, the Examiner reopened prosecution, withdrew the pending rejections, and confirmed the claims. (Ex. 1065, 10/9/13 ACP, at 2, 5-9; see also Ex. 1066, 11/21/13 RAN, at 4-8; Ex. 1067, 1/24/14 NIRC). An inter partes reexamination certificate issued on February 10, 2014. E. Summary of the Ex Parte Reexamination of the 290 Patent The 290 Patent was also the subject of an ex parte reexamination, requested on December 12, 2011 (Ex. 1068, 12/12/11 Request) and granted on January 26, 2012 (Ex. 1069, 01/26/12 Order). Providing no independent rationale, the Examiner merely adopted the inter partes Examiner s conclusion that the 290 Patent claims were entitled to at least the November 24, 2003 filing date of the 800 Application. (Ex. 1070, 9/10/12 NIRC, at 2). Accordingly, the references submitted in the ex parte reexamination were excluded as prior art (id.), and an ex parte reexamination certificate was issued on October 8, 2012. 10

F. The 290 Patent Claims Are Not Entitled to Claim Priority to the Provisional Applications Filed on November 22, 2002 The 290 Patent claims are not entitled to the priority date of the earliest provisional applications filed on November 22, 2002: U.S. Application Nos. 60/428,356 (Ex. 1013); 60/428,358 (Ex. 1014); 60/428,450 (Ex. 1015); and 60/428,452 (Ex. 1016). Under 35 U.S.C. 120, a [later-filed] patent is entitled to the priority date of an earlier filed application if (1) the written description of the earlier filed application discloses the invention claimed in the later filed application sufficient to satisfy the requirements of 112. In re NTP, Inc., 2011 U.S. App. LEXIS 15816, at *20-21. A patent claim is not entitled to the priority of a provisional application unless the provisional application contain[s] a written description of the invention and the manner and process of making and using it. New Railhead Mfg., LLC v. Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002) (discussing priority under 35 U.S.C. 119). To satisfy this requirement, the written description of the provisional application must show [the inventors] had invented each feature that is included as a claim limitation, and [t]he adequacy of the written description (i.e., the disclosure) is measured from the face of the application. Id. at 1295. Here, neither the term 20 amps nor any variation thereof appears anywhere in the November 22, 2002 provisional applications. (Ex. 1011, Abraham 11

Decl., at 49). Thus, there is no written description in any of the November 22, 2002 provisionals showing that the inventors had invented and were in possession of a battery pack for a power tool that could discharge at approximately 20 amps or greater. (Id.). Indeed, during the inter partes reexamination of the 290 Patent, the Examiner found that the November 22, 2002 provisionals do not in any way discuss or mention battery cells producing an average discharge of greater than or equal approximately 20 amps. (Ex. 1059, 1/24/12 Order, at 3). Milwaukee failed to identify any support for the 20 amps limitation in any of the November 22, 2002 provisionals. Although the Examiner ultimately found the 290 Patent claims entitled to the November 24, 2003 filing date of the 800 Application, the Examiner maintained the earlier finding that the claims of the 290 Patent are not entitled to the November 22, 2002 priority date. (Ex. 1062, 8/28/12 ACP). Moreover, the patent owner itself has admitted that none of the 290 Patent s provisional applications disclose that any of the battery cells identified in those applications are either collectively or individually capable of producing an average discharge current greater than or equal to approximately 20 amps. (Ex. 1083, 1/29/15 Amended Answer, at 73-84). III. CLAIM CONSTRUCTION In an IPR, claim terms are given their broadest reasonable interpretation ( BRI ) (37 C.F.R. 42.100(b)), in accordance with their ordinary and customary 12

meaning as would be understood by one of ordinary skill in the art in the context of the entire patent disclosure. Nuvasive v. Warsaw Orthopedic, Inc., IPR2013-00206, Paper No. 17 at 6 (P.T.A.B. Sept. 23, 2013); see also Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc). The ordinary and customary meaning applies unless the inventor has set forth a special meaning for a term in the specification. Nuvasive, IPR2013-00206, Paper No. 17 at 6; see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). A person of ordinary skill in the art at the time of the alleged invention would have had either (i) a Master s Degree in chemistry, chemical engineering, electrical engineering, or a related field focusing on battery technology and applications as well as 1 to 2 years of experience in battery technology and applications, or (ii) a Bachelor s Degree in any such field or related field with 3 to 5 years of experience in battery applications. (Ex. 1011, Abraham, at 22-23; Ex. 1012, Horn, at 13). When the BRI standard is applied to the claims of the 290 Patent, one of ordinary skill in the art would understand the following claim terms to have the 13

following meanings: 2 A. a housing connectable to and supportable by the hand held power tool The terms connectable to and supportable by are purely functional limitations, reciting no additional structure, and therefore are not entitled to any patent weight. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). [A]pparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). And here, unlike the claimed invention in In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), the written description of the 290 Patent does not suggest any narrower meaning than the basic idea that the housing is merely capable of connecting to and supporting a handheld power tool. Id. at 1379. As such, the terms connectable to and supportable by indicate capability alone and, therefore, no patentable weight should be afforded to them. 2 Petitioner s positions regarding the scope of the claims should not be construed as an assertion regarding the appropriate claim scope in other adjudicative forums, where a different claim interpretation standard may apply. 14

B. battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps Petitioner has attempted to understand and apply the limitation battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps ( the 20 Amp Limitation ), as recited in independent claim 1. Though Petitioner does not base its challenge on any claim term s indefiniteness, the Board may nonetheless consider indefiniteness under 35 U.S.C. 112, 2 as a threshold matter in determining the BRI of the claim language. See, e.g., Brainlab, AG v. Sarif Biomedical LLC, IPR2014-00753, Paper No. 10 at 11 (P.T.A.B. Nov. 4, 2014). A limitation is indefinite if it fails to inform those skilled in the art about the scope of the invention with reasonable certainty. Nautilus, Inc. v. Biosig Instrums., Inc., 134 S. Ct. 2120, 2129 (2014); see also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1369 (Fed. Cir. 2014). In this case, the average discharge current of a battery depends on a number of factors, including how long the battery is used, whether the battery is discharged in multiple discharge events, and the application or task for which the tool is used. (Ex. 1011, Abraham, at 57-58; Ex. 1012, Horn, at 37-39). Even the same tool, such as a drill, will exhibit varying discharge capabilities based on, for example, the particular application for which it is used (e.g., discharging at a high current when drilling into steel versus discharging at a lower current when drilling into drywall). (Id.). 15

But neither the 290 Patent, nor its prosecution and reexamination histories, nor the district court s construction of this term in the Hitachi Litigation provides sufficient guidance to determine whether a given battery pack meets the 20 Amp Limitation. The claim language and specification of the 290 Patent, for example, do not at all explain the 20 Amp Limitation. In fact, the only reference to this limitation in the specification is a naked statement that the battery pack 30 can supply an average discharge current that is equal to or greater than approximately 20 A. (Ex. 1005, 290 Patent, at 10:23-25). Significantly, neither the claim language nor the specification explains over what time period the average discharge is to be measured. (Exhibit 1011, Abraham, at 57-58). Should it be 10 seconds, the time it roughly takes to insert a screw? Should it be 30 seconds, the time it roughly takes to saw a 6-inch plank in half? And even then, what method or particular application should be used to determine the discharge current? None of these critical pieces of information are anywhere to be found in the 290 Patent. (Id.). Likewise, to the extent they are relevant, the prosecution histories of the 290 Patent and its priority applications similarly fail to clarify the meaning of this term. For example, during prosecution, inventor Meyer submitted a declaration describing tests he performed on the E-One prototype battery packs and concluded that these battery packs were not suitable for use in a hand held power tool because 16

the voltage of the Pack rapidly dropped off to a low voltage threshold of 12.50V. (Ex. 1032, 3/19/09 Meyer Decl., at 7). Meyer represented that [t]his Discharge Test was conducted under a constant discharge current of 20 amps, and the noted voltage drop occurred within less than one minute. (Id.). But Meyer did not explain why he measured the discharge current in this manner or why he chose a benchmark which is far in excess of many power tool applications. In other words, Meyer did not explain why the E-one battery pack s continuous discharge at 20 amps over a time period suitable for many power tool applications did not fall squarely within the claims requirement that the battery cells be capable of producing an average discharge current greater than or equal to approximately 20 amps. The reexamination histories also fail to clarify these points. Mr. Meyer also did not draw attention in his 2009 declaration to the tests he conducted in which both the Lithium-based E-One battery packs and Nickel-based battery packs were used to make several cuts in a board (i.e., a test in which the battery was discharged in the manner consistent with the intended use of the tool), or the fact that the E-One Lithium-based battery pack performed substantially the same as the Nickel-based battery pack, both in the number of cuts (slightly more with the Nickel-based pack) and the degree of battery pack temperature rise both indications that the E-One Lithium-based battery pack was as suitable for power tool use as the Nickel-based pack it was tested against. (Ex. 1012, Horn, at 35). 17

Although the court in the Hitachi Litigation construed the 20 Amp Limitation, the court s construction is neither supported nor the broadest reasonable interpretation. Specifically, the court construed the 20 Amp Limitation as follows: the battery cells, when configured together in a battery pack, are capable of producing reasonably close to 20 amps of discharge current or greater over the course of delivering their entire rated capacity, and concluded that the discharge must occur over entire rated capacity of the cells. (Ex. 1082, 12/11/12 Order, at 6-7). It is unclear, however, whether this means the entire rated capacity over the course of intermittent discharges or a single, continuous discharge. The court identified no support in the claims or specification for how to measure the discharge current. To the extent the court meant the current must be maintained over a single, continuous discharge, the court s construction makes little sense given that the claimed battery pack is to be used with hand held power tools, which are typically used intermittently for only short durations. (Ex. 1011, Abraham, at 58; Ex. 1012, Horn, at 38). Such an interpretation also would be improper as it would ignore the express claim term average, as used in 20 Amp Limitation. The use of the term average suggests that the discharge current may vary over time. (Ex. 1011, Abraham, at 58). 18

Even if a battery pack were discharged in a single, continuous use, as noted above, the discharge current will still directly depend on the particular power tool and the application for which the tool is used (e.g., drilling a hole in soft material vs. sawing a thick piece of hard wood board). (Ex. 1011, Abraham at 57; Ex. 1012, Horn, at 38). As noted above, the court s construction is also not the broadest reasonable one. Rather, under the BRI standard, a person of ordinary skill could potentially find that the 20 Amp Limitation is satisfied by battery cells capable of producing an average discharge current greater than or reasonably close to 20 amps when used with a hand held power tool for some application over a time period consistent with the intended use of the tool. (Ex. 1011, Abraham, at 59-60). That is, one of ordinary skill in the art, absent any indication in the specification otherwise, would assume that the term average discharge current is only meaningful in the context of hand held power tools when the average is measured in a manner that is consistent with the intended use of the tool. (Id.; Ex. 1012, Horn, at 38-39). Thus, under the BRI standard applicable here, a person of ordinary skill could potentially find that the 20 Amp Limitation is satisfied by battery cells capable of producing an average discharge current greater than or reasonably close to 20 amps when used with a hand held power tool for some application over a 19

time period consistent with the intended use of the tool. While Petitioner has applied that interpretation here, such an interpretation leaves uncertain whether a given battery pack, depending on the particular tool and application for which it is used, would actually satisfy the 20 Amp Limitation. C. nominal voltage Petitioner has attempted to understand and apply the term nominal voltage, as recited in claims 5, 7 and 11. Again, although Petitioner s challenge is not based on the indefiniteness of any claim term, the Board may consider such issues. In that context, and as explained below, the Petitioner submits that the term nominal voltage is indefinite because a person of ordinary skill in the art cannot determine with reasonable certainty which of several possible constructions should apply to this term. Nautilus, 134 S. Ct. at 2129; Interval, 766 F.3d at 1369. The bare term nominal voltage is commonly used in the art to refer to the midpoint voltage between when a battery is fully charged and when it is fully discharged. (Ex. 1011, Abraham, at 62). For example, a person of ordinary skill would understand that a typical lithium-ion cell with a fully charged voltage of 4.2 volts and a fully discharged voltage of 3.0 volts has a midpoint voltage of approximately 3.6 volts. (Id.). The term nominal voltage may also refer to the voltage that is typical of the operating voltage of a battery cell. (Ex. 1076, Linden, at 1.13, 3.2). 20

The 290 Patent specification, however, does not define the term nominal voltage, and to the contrary, appears to intentionally inject ambiguity into whether any particular meaning applies. For example, the specification states that [i]n some constructions, each cell... can have a nominal voltage of approximately 3.6 V, that [i]n other constructions, each cell... can have a nominal voltage of approximately 4 V, and that in further constructions, each cell... can have a nominal voltage of approximately 4.2 V. (Ex. 1005, 290 Patent, at 10:36-40). But the specification does not explain in any of these instances to which voltage the nominal voltage refers. In fact, each of the so-called nominal voltages identified in the specification (i.e., 3.6 V, 4 V, 4.2 V) would fall within the operating voltage range of several typical lithium-ion cell chemistries. (Ex. 1011, Abraham, at 63). The prosecution history, to the extent it is relevant, suggests yet another possible interpretation of the term nominal voltage namely, the voltage of a fully charged battery cell. For example, inventor Meyer submitted a declaration in which he described the E-One prior art battery packs as having a nominal charged voltage of approximately 4.2V. (Ex. 1032, 3/19/09 Meyer Decl., at 4). Meyer appears to have calculated this voltage by measuring the voltage of the fully charged battery pack and dividing by the number of cells. (Ex. 1011, Abraham, at 64). Meyer did not, however, identify any basis for this calculation. Indeed, 21

Meyer s use of the term is inconsistent with an ordinary use of the term to mean the midpoint voltage (Id.). Therefore, a person of ordinary skill who is trying to ascertain the scope of this claim must select between several competing meanings of the term nominal voltage, including: (a) the midpoint voltage of a cell; or (b) the fully charged voltage of a cell, or (c) the typical operating voltage of the cell for a particular application, which would include both the midpoint voltage and the fully charged voltage. (Id., at 61-64). Given the BRI standard that is applicable here, each of the above meanings would apply and, to that end, Petitioner has identified corresponding disclosure in the prior art regarding such nominal voltages. IV. STATEMENT OF PRECISE RELIEF REQUESTED FOR EACH CLAIM CHALLENGED A. Statutory Grounds of Challenge Petitioner requests IPR under 35 U.S.C. 311 of claims 1 11 of the 290 Patent and cancellation of these claims as unpatentable under 35 U.S.C. 103 on the grounds set forth below: Ground Claim(s) Basis for Rejection Ground 1 Claims 1 11 Claims 1, 4 and 6 11 are obvious over Takano in view of Saft under 35 U.S.C. 103(a) Claims 2, 3 and 5 are obvious over Takano and Saft in further view of Yanai under 35 U.S.C. 103(a) Ground 2 Claims 1 11 Obvious over Takano in view of Adachi under 35 U.S.C. 103(a) 22

Ground 3 Claims 1 11 Obvious over Takano in view of Yanai under 35 U.S.C. 103(a) Ground 4 Claims 1 11 Obvious over Admitted Prior Art in view of Yanai under 35 U.S.C. 103(a) Petitioner details the reasons for unpatentability and specific evidence supporting this Petition below. B. Overview of the Cited Art Hand held portable power tools and lithium battery packs for such tools, as well as lithium-based battery cell chemistries capable of safely producing high current discharge rates, were known prior to the earliest date to which the 290 Patent is entitled to claim priority. (Ex. 1012, Horn, at 14-15). The use of the best available battery cells in a power tool battery pack was obvious and a matter of design choice, not an innovation. The following are examples of such prior art: a. Background and Admitted Prior Art Well before the 290 Patent, battery packs were commonly used to power hand held portable power tools. (Id.). The market constantly demanded more power. For example, a 1996 Popular Science magazine article depicting a battery pack-powered drill, discussing the Bigger and Brawnier cordless tools entering the market, the use of various battery chemistries (including lithium-ion batteries), and consumer demand for more powerful cordless power tools even when lowerpowered cordless tools would suffice. (Ex. 1071, Unplugged!, at p. 71 ( Will voltages continue to rise? Undoubtedly. Some consumers simply gravitate to 23

the tool with the highest voltage like buying a four-wheel-drive vehicle for a suburban commute. )). Images from the magazine article are reproduced below: The 290 Patent s description of the prior art depicts an existing battery pack 230 in Figs. 36 38, and details how the existing battery pack 230 is connectable to electrical equipment, such as, for example, a power tool 34 (shown in FIG. 11A), to power the power tool 34. (Ex. 1005, 290 Patent, at 1:65-2:1; FIGS. 36-38). With reference to the prior art battery pack of FIG. 36 (reproduced below), the 290 Patent further details how the known housing 242 provides a support portion 250 for supporting the existing battery pack 230 on an electrical device, and how that support portion 250 allows the battery pack 230 to be connectable to the electric device or alternatively to a battery charger 38. (Id., at 2:1-9). Notably, there are no readily apparent structural differences between the Admitted Prior Art battery pack of Fig. 36 (reproduced below) and the claimed 24

battery pack shown in Fig. 2 (reproduced below), e.g., same terminal structure, same guide rails, same type of squeeze the sides pack/tool latch mechanism: The battery pack 230 in Figs. 36-39 and the driver drill 34 in Fig. 11A appear to depict older Milwaukee tools. For example, the battery pack 230 appears to be a Milwaukee catalog no. 48-11-2230 battery pack, which has been on the market since at least 1999. (Ex. 1011, Abraham, at 74; Ex. 1012, Horn, at 41-45). b. Hand Held Power Tools and Battery Packs Takano. Turning outside of the 290 Patent disclosure, an example of a prior art battery pack is described in a U.S. patent application based on a 2001 Japanese patent application ( Takano ) (Ex. 1072, filed in the U.S. on November 21, 2002). As with the Applicant s Admitted Prior Art battery packs, Takano disclosed a battery pack including a secondary battery used as the power source for a cordless power tool. (Ex. 1072, Takano, at [0002]). 25

Takano further explains how [s]econdary batteries used in power tools are normally in the form of a battery pack that includes a battery made from battery cells connected in series by, for example, a connection plate. The battery pack is mounted in the power tool to drive a motor for tightening screws or for performing other operations. (Id., at [0004]). Since the 290 Patent claims are not entitled to the priority date of the earliest provisional applications filed on November 22, 2002, Takano is prior art to the 290 Patent at least under 35 U.S.C. 102(e). c. High Power Lithium Batteries Adachi (2000), Yanai (2001) and Saft (2001) Development of lithium-based batteries with higher power-density and higher current discharge rate capability has been the subject of intense research since Sony introduced the first commercial-available lithium-ion battery cells in 1990. (Ex. 1011, Abraham, at 65-67). In early 2000, a patent application ( Adachi ) was filed detailing the development of electrode materials for lithium batteries, the construction and testing of industry standard-sized lithium-ion battery cells (specifically, Lithium Manganese spinel cells) and demonstrated that the cells were capable of safely producing high current discharge rates, i.e., battery cells suitable for use in a power tool battery pack to generate greater than 20 A. (Ex. 1073, Adachi; Ex. 1011, Abraham, at 79; Ex. 1012, Horn, at 25-28). Adachi published on March 31, 2000 and therefore is 102(b) prior art to the ʼ290 Patent. 26

In October 1999, a Japanese patent application was filed disclosing high current discharge lithium-based positive electrode material capable of producing sustained current discharge rates of up to 15 C. 3 (Ex. 1074, Yanai). Yanai disclosed the development of lithium-based electrode materials, including construction and testing of lithium-based battery cells built with these materials that safely produced high current discharge rates, thereby demonstrating battery cells suitable for use in a power tool battery pack to generate greater than 20 A. (Ex. 1011, Abraham, at 82-83; Ex. 1012, Horn, at 25-28). With respect to battery pack use, Yanai also discloses the testing of several of its battery cells connected in series and demonstrated that the electrical interconnection of these cells had no impact on the performance of the individual battery cells. (Id.). Yanai published in April 2001, and therefore is 102(b) prior art to the ʼ290 Patent. In Summer 2001, a French lithium battery manufacturer, Saft, published a product specification document containing details of battery packs using high discharge rate lithium-based battery cells with a capacity of greater than 3.0 Ah, capable of generating more than 20 A, and of sizes suitable for use in a hand held 3 The relationship between the capacity of a battery (measured in Amperehours, Ah ) and the amount of current being drawn out of the battery (measured in amperes, A ) is expressed in terms of C. (Ex. 1011, Abraham, at 83). 27

power tool battery pack. Saft further stated that the packs can use these lithiumbased battery cells in series and/or in parallel and are provided with a protection circuit as needed to form battery modules for applications. (Ex. 1075, Saft; Ex. 1011, Abraham, at 84-85; Ex. 1012, Horn, at 28, 50-51). Saft was published in Summer 2001, and therefore is 102(b) prior art to the ʼ290 Patent. V. DETAILED EXPLANATION OF THE CHALLENGE A. Ground 1: Claims 1, 4 and 6 11 Are Obvious Over Takano in View of Saft with Claims 2, 3 and 5 Being Obvious in Further View of Yanai Claim 1 recites: A battery pack for powering a hand held power tool, the battery pack comprising: [1a] a housing connectable to and supportable by the hand held power tool; [1b] a plurality of battery cells supported by the housing, [1d]... the battery cells having a lithium-based chemistry. Takano discloses each of these elements. Specifically, Takano discloses a battery pack including a secondary battery used as the power source for a cordless power tool. (Ex. 1072, Takano, at [0002]). As with the Applicant s Admitted Prior Art, Takano discloses that its battery pack 1 is connected to a power tool 200. (Id., at [0024]; see also AAPA (Ex. 1005), at 1:65-2:9). 28

As noted above in Section III.A, element [1a] is purely functional and should not be entitled to any patentable weight. That fact notwithstanding, as shown in the annotated version of the reproduced circuit diagram of Figure 2 from Takano, above, Takano s cordless power tool ( power tool 200 ) (annotated in green) is connected to the battery pack housing ( battery pack 1 ) (annotated in blue) (element [1a]) by positive and negative terminal pairs 2/201 and 3/202, respectively, where the battery pack housing includes a plurality of battery cells (cells 11 18) (annotated in red) (element [1b]). Takano s 8 cells, identified as including lithium-ion cells (element [1d]) with a voltage of 3.6 V/cell, are connected in series (and thus would generate 28.8 V, i.e., eight cells x 3.6 V/cell). (Ex. 1072, Takano, at Abstract; [0004], [0026], [0048], [0049]; Fig. 2). As with the Applicant s Admitted Prior Art, Takano explains that [s]econdary batteries used in power tools are normally in the form of a battery 29

pack that includes a battery made from battery cells connected in series by, for example, a connection plate, and that the battery is mounted in the power tool to drive a motor for tightening screws or for performing other operations. (Id., at [0004]; see also AAPA (Ex. 1005), at 1:44-65; 2:10-17). In addition to Takano s schematic illustration of the housing structure of its battery pack 1, one of ordinary skill in the art would understand that a normal battery pack for a cordless power tool typically has a housing connectable to and supportable by the power tool. (Ex. 1011, Abraham, at 96). [1c] the battery cells being capable of producing an average discharge current greater than or equal to approximately 20 amps [the 20 Amp Limitation], While Takano is silent on the amount of current its battery can discharge, Saft expressly discloses a battery pack using lithium-based battery cells (element [1d]) which, when connected in series and/or parallel, would satisfy the 20 Amp Limitation when used in the battery pack 1 of Takano. (Ex. 1011, Abraham, at 102-09; Ex. 1012, Horn, at 28, 50-51). Specifically, Saft discloses lithium-based battery cells having the following characteristics: 30

(Ex. 1075, Saft, at 5 (the Saft Table )). The Saft Table shows that Saft s MP174865 cells had a typical capacity of 4.6 Ah and Saft s MP176065 cells had a typical capacity of 6 Ah. Both of these cells were capable of a maximum continuous discharge rate of up to 3C/4C. (Id.). Saft expressly envisions its cells being used in a wide range of applications, and in cell arrangements varying both with respect to the number of cells in series and in parallel. (Id. at 2-3; Ex. 1011, Abraham, at 104-06, 113; Ex. 1012, Horn, at 50-56). Two such obvious examples would be: a 4.6 Ah MP 174865 cell discharged at 3C would provide approximately 13.8 amps, and two of these cells in parallel discharging at 3C would provide approximately 27.6 amps. 31

a 6 Ah MP 176065 cell discharged at 3.5C would provide approximately 21 amps by itself. Various combinations of the Saft MP 174865 and MP 176065 cells in series and/or parallel would provide all of the claimed battery pack amperages and voltages in cell arrangements that each would have been of a reasonable size for use with a portable power tool, such as a drill. For example, substituting Takano s eight-cell arrangement for a comparable eight-cell arrangement using Saft s MN 176065 battery cells would provide a combined nominal voltage of 28.8 V using batteries that would weigh only 1.2 kg (8 cells x 150 gr/cell; 2.64 lbs.) and have a size of approximately 5 x 2.5 x 3 (2 stacks of 4 cells having a size of 59.6 mm wide, 2 x 64.5 mm long, 4 x 18.5 mm high), which are consistent with typical power tool battery pack sizes of nickel-based battery packs at the time. (Ex. 1011, Abraham, at 108, 114; Horn, at 57). A person of ordinary skill would understand that battery cell capacity dictates run-time for the battery pack, and would have been motivated to select a battery cell arrangement with sufficient capacity to meet the application s design requirements. (Ex. 1011, Abraham, at 89-91; Ex. 1012, Horn, at 27-32, 51-56). Given that it is a matter of routine mechanical and electrical design to arrange cells as necessary to meet a given battery pack application s power and size requirements, one of ordinary skill would have been readily able to arrange the 32

Saft cells in any number of series and/or parallel arrangements to meet those requirements. (Ex. 1011, Abraham, at 102-13; Ex. 1012, Horn, at 50-56). One of ordinary skill in the art would have been motivated to use the lithium-ion batteries taught by Saft in the battery pack of Takano in view of the fact that Takano expressly discloses and envisions using lithium-ion batteries in its battery pack (Ex. 1072, Takano, at [0004], [0048], [0049]). Moreover, one of ordinary skill in the art would have been particularly motivated to use the lithiumion batteries taught by Saft in light of the known demand for higher power in power tool applications. (Ex. 1011, Abraham, at 110-12; Ex. 1012, Horn, at 14, 15, 50-56). In fact, Takano itself identifies the significant performance improvements in high-current discharge battery cells, including lithium-based chemistry battery cells. (Ex. 1072, Takano, at [0004]). For its part, Saft touts being able to provide the highest energy density in a single cell, thereby providing unparalleled autonomy for the most demanding mobile devices. (Ex. 1075, Saft, at 2). One of ordinary skill in the art further would have been particularly motivated to use the Saft batteries in power tools in view of their noted versatility and usefulness across a wide range of applications. (Ex. 1011, Abraham, at 113; Ex. 1012, Horn, at 56). Thus, under either the district court s incorrect construction of the 20 Amp Limitation or the construction proposed by the Petitioner, Saft fully discloses element [1c]. 33

Thus, claim 1 is obvious in view of Takano and Saft. Claim 2 recites that the battery cells have a lithium-manganese chemistry. The lithium-ion battery cells of Saft are lithium-cobalt chemistry. Yanai teaches that its high-current discharge rate lithium-manganese chemistry battery cells are a superior replacement for lithium-cobalt, offering cost savings and lack of reliance on scarce materials. (Ex. 1011, Abraham, at 120; Ex. 1074, Yanai, at [0003]). Thus, one of ordinary skill in the art would have been motivated to use the superior Yanai lithium-manganese material cells in place of lithium-cobalt in the Saft cells. (Ex. 1011, Abraham, at 115-22; Ex. 1012, Horn, at 56). Claim 3 recites that the battery cells have a spinel chemistry. The Yanai lithium-manganese material is a spinel chemistry, i.e., it has a spinel crystal structure. (Ex. 1011, Abraham, at 123-24). Claim 4 recites that wherein the plurality of battery cells includes seven battery cells. Takano itself teaches a battery pack having 8 cells. (Ex. 1072, Takano, at [0026]; Figure 2). Because the term includes is open ended, the claimed battery pack may include seven or more battery cells. MPEP 2111.03. Moreover, as noted above several Saft cell configurations would have seven or more cells while still being a suitable size for a battery pack. (Ex. 1011, Abraham, at 125-28). 34

Claim 5 recites that each of the plurality of battery cells has a nominal voltage of approximately 4.2 volts. Yanai s lithium-manganese chemistry battery cells have a nominal charged voltage of 4.2 V. (Ex. 1074, Yanai, at [0017], [0024], [0026], [0027]); Ex. 1011, Abraham, at 129-31). Claim 6 recites that the battery cells have an ampere-hour capacity of approximately 3.0 ampere-hours. Saft discloses cells having ampere-hour capacities above the claimed approximately 3.0 ampere-hours (Ex. 1075, Saft Table, supra, the MP 174865 and MP 176065 cells), as well as cells below 3.0 ampere-hours (Saft Table, supra, MP 144350 cells). One of ordinary skill in the art would have been well aware that if a battery cell with a high power density has a capacity greater than a target ampere-hour level (such as 4.6Ah in a Saft MP 174865 cell), it would be a matter of routine design to decrease the cell capacity to obtain the target capacity, such as 3.0 Ah. Specifically, one of ordinary skill in the art would recognize that the ampere-hour (Ah) capacity of a secondary battery is primarily a function of the battery s chemistry, internal structure and size, and that reducing the battery s capacity to suit a particular application would be a mere design matter. (Ex. 1011, Abraham, at 132-36; Ex. 1012, Horn, at 57). Alternatively stated, if a particular size battery has a greater capacity than is needed for a particular application, it is a mere matter of design to reduce the size of the cell or alter the internal cell 35

structure (such as removing excess positive and negative electrode active material) to obtain a target Ah capacity. (Ex. 1011, Abraham, at 134-35; Ex. 1012, Horn, at 57). Thus, it would have been obvious to one of ordinary skill in the art with knowledge of the Saft 4.6 Ah and 6 Ah cells how to reduce the Ah capacity of the Saft cells if presented with a specific lower target capacity, such as 3.0 Ah. (Ex. 1011, Abraham, at 134-35; Ex. 1012, Horn, at 57). The above also is consistent with Saft s teaching that its high power-density battery cells have a broad range of capacities, significantly above previous lithium-based cells, as shown in the reproduced graphic below: (Ex. 1075, Saft, at 3). Claim 7 recites that the plurality of battery cells has a combined nominal voltage of at least approximately 28 volts. Takano teaches a combined nominal 36