IP Law Daily, PATENT—N.D. Ill.: Black & Decker can proceed to trial on string trimmer infringement claim, (Feb 24, 2020)

By Joseph Arshawsky, J.D.

Two expert reports precluded summary judgment of patent infringement claims related to Black & Decker’s motor mounting system for a string trimmer.

Positec USA Inc.’s and RW Direct Inc.’s motion for summary judgment of invalidity was denied by the federal court in Chicago based on genuine issues of fact as to whether Defendants’ WORX®-branded products infringed a patent held by Black & Decker Inc. Expert opinions cited by Defendants, when viewed in the light most favorable to Black & Decker, precluded a finding that Defendants had not infringed the patent claim at issue (Black & Decker Inc. v. Positec USA Inc., February 20, 2020, Gottschall, B.).

Black & Decker Inc. and Black & Decker (U.S.) Inc. own U.S. Patent No. 5,554,417 (the ‘417 patent), which covers a "Multi-Purpose Motor Mounting System for a String Trimmer," a power tool used to cut outdoor vegetation. Black & Decker alleged that the defendants infringed claim 16 of the ‘417 patent by selling certain WORX®-branded products in the United States. Defendants filed counterclaims for a declaratory judgment of non-infringement, invalidity, and unenforceability.

In 2016, the Federal Circuit upheld a Patent Trial and Appeal Board ruling that the terms "fixedly" and "fixedly securing" in claim 16 of the ‘417 patent mean "fastened such that relative movement is prevented." The "motor mounting plate" term in claim 16 has been construed to mean a "motor mounting plate which is planar." It is undisputed that the accused products use "two styles of motor mounting structures." Defendants argued that no reasonable jury could find infringement of the "motor mounting plate" limitation in claim 16. Black & Decker countered that a reasonable jury could find infringement because "the motor mounting plates of the Accused Products have planar surfaces." In response to Defendants’ motion for summary judgment, Black & Decker presented an expert report from Christine H. Potter, and pointed to portions of the reports of defendants’ expert, Dr. Glenn Stevick.

Potter report. A Black & Decker Vice President, Potter earned an undergraduate degree in mechanical engineering. Potter stated, "Each of the motor mounting structures included a motor mounting plate and a portion through which mounting screws were passed into threaded features of the motors." Also, the Potter report stated, "the motor mounting plates are planar."

The court concluded that, based on the Potter report, 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. Potter implied: (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. Also, the court noted that Potter offered no explanation of how she reached her conclusions. A bottom line, albeit one embodied in the color coding of an image, is all Potter supplied, so those opinions did not create a genuine fact dispute requiring a trial.

The court also found that Potter’s analysis did 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." The step at issue here involves "fixedly securing a motor mounting plate to a motor." As construed by the Federal Circuit, "fixedly securing" means "fastening such that relative motion is prevented." Additionally, a pair of images in plaintiffs’ statement of additional facts, show that the ring-like structure at issue (which defendants call a flange) does not extend in a plane. Again, Potter uses red highlighting in figures four and five to indicate the motor mounting plate and green to indicate "a portion" of the motor mounting plate through which screws are passed. Figures six and seven 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). Black & Decker pointed 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 Black & Decker 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.

Stevick report. Black & Decker 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." Black & Decker cited 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. 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.

Regardless, 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. This court declines to revisit its claim construction rulings. Black & Decker’s 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. Stevick identified Item 45 in figure 10 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) for a jury to find infringement. Defendants do not argue otherwise.

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. 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. 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.

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 MACK patent. When adequately supported, this is an appropriate subject for an expert opinion on invalidity. 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. Stevick’s invalidity opinions, viewed favorably to Black & Decker, 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.

This case is No. 1:13-cv-03075.

Attorneys: Raymond Pardo Niro, Jr. (Niro McAndrews, LLP) for Black & Decker, Inc. and Black & Decker [U.S.] Inc. Brian D. Roche (Reed Smith LLP) for Positec USA Inc. and RW Direct, Inc.

Companies: Black & Decker Inc.; Black & Decker [U.S.] Inc.; Positec USA Inc., RW Direct, Inc.

Cases: Patent IllinoisNews