Compass Lexecon Client Milwaukee Electric Tool Prevails in Patent Litigation

A jury found in favor of Compass Lexecon's client, power tool manufacturer Milwaukee Electric Tool (Milwaukee), on all counts in a patent infringement suit after less than one day of deliberation.

Milwaukee filed suit against Snap-On, another power tool manufacturer, in District Court in 2014, alleging that Snap-On infringed upon Milwaukee's patents on the use of lithium-ion battery packs in power tools. The District Court litigation was stayed for several years while Snap-On and others challenged the patents before the Patent & Trademark Office's Patent Trial and Appeal Board through inter partes reviews (IPRs). Compass Lexecon expert Dr. Allan Shampine worked with Scott D. Sherwin and Jason C. White of Morgan, Lewis & Bockius LLP through the course of twelve IPR challenges filed against the patents, including those filed by Snap-On. Dr. Shampine provided testimony in the IPRs with respect to secondary considerations of nonobviousness – facts in the marketplace that demonstrate the patented technology was not obvious. All of the IPR challenges were rejected by the Patent Trial and Appeal Board.

Milwaukee's case then proceeded in the District Court, where Milwaukee sought royalties of $28M to $33M. Snap-On argued that the Court should invalidate the patents because they were obvious, and that any damages should not exceed $1.3M. Dr. Shampine again provided testimony that the economic evidence showed the patents were not, in fact, obvious and therefore were valid. The jury found that the patents were valid and were infringed, and awarded damages of $28 million. The jury also found that the infringement was willful, allowing for enhanced damages from the Court, up to trebling the award.

At the District Court trial, Milwaukee was represented by full trial teams from Morgan, Lewis & Bockius LLP and Reinhart Boerner Van Deuren s.c. Dr. Shampine was supported by a team in Compass Lexecon's Chicago office led by Margaret Hlebowitsh.