Note: This disposition is nonprecedential 

United States Court of Appeals for the Federal Circuit 

2007-1243, -1244 

BLACK & DECKER, INC. 

and BLACK & DECKER (U.S.), INC., 

Plaintiffs-Cross Appellants, 

v. 

ROBERT BOSCH TOOL CORPORATION, 

Defendant-Appellant. 

 Dean D. Niro, Niro, Scavone, Haller & Niro, of Chicago, Illinois, argued for the 

plaintiff-cross appellant. With him on the brief were Raymond P. Niro, Paul C. Gibbons, 

and David J. Mahalek. Of counsel was Christopher J. Lee. 

Jon R. Trembath, Merchant & Gould P.C., of Minneapolis, Minnesota, argued for 

defendant-appellant. With him on the brief was Erik G.Swenson, Also on the brief 

were Kirstin L. Stoll-DeBell and Elizabeth J. Reagan of Denver, Colorado. 

Appeals from: The United States District Court for the Northern District of Illinois 

Judge Amy J. St. Eve 
NOTE: This disposition is nonprecedential. 

United States Court of Appeals for the Federal Circuit 

2007-1243, -1244 

BLACK & DECKER, INC. 

and BLACK & DECKER (U.S.), INC., 

 Plaintiffs-Cross Appellants, 

v. 

ROBERT BOSCH TOOL CORPORATION, 

 Defendant-Appellant. 

Appeal from the United States District Court for the Northern District of Illinois in case 

no. 04-CV-7955, Judge Amy J. St. Eve. 

 __________________________ 

DECIDED: January 7, 2008 

 __________________________ 

Before RADER, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and PROST, Circuit 

Judge. 

PROST, Circuit Judge. 

Robert Bosch Tool Corp. (”Bosch”) appeals from a final judgment of the United 

States District Court for the Northern District of Illinois, relating to a patent infringement 

suit by Black & Decker, Inc. and Black & Decker (U.S.), Inc. (collectively “B&D”) 

asserting U.S. Patent Nos. 6,308,059 (“the ’059 patent”) and 6,788,925 (“the ’925 

patent”). Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 04-CV-7955 (N.D. Ill. 

Feb. 20, 2007) (“B&D JMOL”). Specifically, Bosch contests the district court’s claim 

construction, the jury’s infringement verdict, the jury instructions on obviousness, the 

district court’s denial of inequitable conduct, the district court’s denial of judgment as a 
matter of law (“JMOL”) relating to willful infringement, and the district court’s award of 

enhanced damages to B&D. B&D cross-appeals one aspect of the district court’s 

injunction, which specifically excluded from the enjoined products one of Bosch’s radios 

not considered at trial. Black & Decker, Inc. v. Robert Bosch Tool Corp., No. 04-CV7955 (N.D. Ill. Dec. 7, 2006) (“Injunction Order”). In light of problems with the district 

court’s claim construction, we amend that construction, vacate the infringement verdict, 

and remand for further proceedings. We affirm, however, the jury’s verdict on 

obviousness and the district court’s denial of Bosch’s inequitable conduct claim. 

BACKGROUND 

The ’059 and ’925 patents relate to a combination of a radio and a battery 

charger. The radio contains a power supply that, when plugged into an alternating 

current (“AC”) outlet, supplies direct current (“DC”) to power the radio and charge the 

battery. When disconnected from the AC outlet, the radio may operate on DC power 

supplied by the battery. Such radios find particular utility on construction job-sites, 

which create high demand to recharge cordless power tools. In light of the variety of 

battery voltages used in cordless tools, the patents contemplate operation using a 

variety of battery voltages. The patents claim the invention with some variation; as an 

example for the purposes of our analysis, claim 1 of the ’059 patent recites (emphases 

added): 

A combination battery charger and portable radio comprising: 

an enclosure; 

a radio disposed in said enclosure and including a radio receiver for 

receiving radio signals and generating audio output signals responsive 

thereto; 

an AC powered DC power supply disposed in said enclosure for powering 

said radio and generating a first DC output voltage having a magnitude 

sufficient to power said radio; 

2007-1243, -1244 2
a removable DC power supply disposed in said enclosure for powering 

said radio, said removable DC power supply being selected to generate 

a second DC output voltage having a magnitude in a range that 

includes voltages both lower and higher than the magnitude of said first 

DC output voltage from said AC powered DC power supply; and 

a power conversion circuit disposed between said AC powered DC power 

supply and said removable DC power supply, and between said radio 

and said removable DC power supply, to enable said removable DC 

power supply to power said radio and be charged by said AC powered 

DC power supply, regardless of the magnitude of the second DC output 

voltage from said removable DC power supply. 

After a trial, the jury found that Bosch had infringed claims 1, 2, 6, 7, and 10 of 

the ’059 patent and claim 1 of the ’925 patent, and that those same claims were not 

invalid, but that claims 2 and 10 of the ’925 patent were invalid as anticipated and 

obvious. Injunction Order; B&D JMOL. Based on the jury’s finding that Bosch willfully 

infringed the patents, the district court enhanced damages by fifty percent. Black & 

Decker, No. 04-CV-7955 (N.D. Ill. Nov. 20, 2006). The district court denied Bosch’s 

inequitable conduct claim after a bench trial. Black & Decker, No. 04-CV-7955 (N.D. Ill. 

Oct. 24, 2006) (“Inequitable Conduct”). 

The district court issued an injunction directed at the Bosch radios considered at 

trial, but specifically exempted a newer model radio that the court had excluded from 

trial by granting a motion in limine. Injunction Order. Considering post-trial motions, the 

district court denied Bosch’s motions for JMOL and for a new trial that it did not infringe 

B&D’s patents, willfully or otherwise. Black & Decker, No. 04-CV-7955 (N.D. Ill. Dec. 

22, 2006; Jan. 12, 2007). Finally, the district court granted B&D’s motion for JMOL that 

claims 2 and 10 of the ’925 patent were not invalid as anticipated or obvious in light of 

the asserted prior art. B&D JMOL. This appeal and cross-appeal followed. We have 

jurisdiction pursuant to 28 U.S.C. 1295(a). 

2007-1243, -1244 3
DISCUSSION 

I 

On appeal, Bosch challenges the district court’s construction of “power 

conversion circuit,” which the district court construed as a “circuit that changes electrical 

energy.” Bosch contends that the proper construction should require a plurality of DC to 

DC (“DC/DC”) converters, which can convert an input DC voltage to a different output 

DC voltage, either higher or lower. It also asserts error in the court’s refusal to construe 

“regardless” as used in the claims. 

B&D claims that, by failing to object to the claim construction jury instructions and 

failing to argue claim construction in its motion for JMOL, Bosch has waived the ability 

to challenge those constructions. It also disputes the correct construction for “power 

conversion circuit,” asserting that the district court correctly construed the broad claim 

language by refusing to limit it to the preferred embodiment as captured by the 

dependent claims. 

As an initial matter, we agree with Bosch that the Seventh Circuit futility 

exception controls the wavier issue here. Because Bosch proposed and argued for its 

construction at the Markman hearing, “[o]bjection under Rule 51 was not required to 

preserve the right to appeal the Markman ruling.” Cardiac Pacemakers, Inc. v. St. Jude 

Medical, Inc., 381 F.3d 1371, 1381 (Fed. Cir. 2004) (considering the applicable rule 

under Seventh Circuit precedent). 

The district court based its construction of “power conversion circuit” in large part 

on the principle of claim differentiation, because dependent claims require a power 

conversion circuit (“PCC”) that produces a voltage different from the power supply or 

2007-1243, -1244 4
battery. Black & Decker, No. 04-CV-7955, slip op. at 17 (N.D. Ill. Sept. 28, 2005). That 

doctrine, however, cannot serve as a basis to give a patent scope beyond the invention 

it discloses. See Kraft Foods, Inc. v. Int’l Trading Co., 203 F.3d 1362, 1368 (Fed. Cir. 

2000). Any presumption arising here from the dependent claims fails to override the 

proper construction of “power conversion circuit” provided by the claims, the 

specification, and the prosecution history. Accordingly, as discussed below, the district 

court erred by construing “power conversion circuit” without sufficient consideration of 

factors beyond those three words and the dependent claims. 

A 

The surrounding claim language provides an important consideration for 

construing a particular term within a claim. Phillips v. AWH Corp., 415 F.3d 1303, 1314 

(Fed. Cir. 2005). To provide for functionality with a variety of battery voltages, the 

patents claim a “power conversion circuit . . . to enable [the battery] to power [the] radio 

and be charged by [the power supply], regardless of the [battery voltage].” E.g., ’059 

patent, col.5 ll.38–45. Claim 1 of the ’925 patent requires only that the PCC enables the 

battery to power the radio regardless of battery voltage. ’925 patent, col.5 ll.46–50. In 

either case, the surrounding claim language requires that the PCC operates to enable 

certain functionality in the combination radio. 

To understand this requirement, we must consider three possibilities: (1) the 

battery provides approximately the same voltage as the power supply, (2) the battery 

provides a higher voltage than the power supply, and (3) the battery provides a lower 

voltage than the power supply. The claims contemplate all of these three conditions. 

E.g., ’059 patent, col.5 ll.32–37. Under all conditions, we assume that the power supply 

2007-1243, -1244 5
can power the radio directly. With a battery of the same voltage as the power supply, 

either the battery or the power supply may power the radio; similarly, the power supply 

can charge the battery directly. With a battery of a higher voltage than the power 

supply, the PCC must increase the voltage from the power supply in order to charge the 

battery, and reduce the voltage from the battery in order to power the radio from the 

battery. Conversely, for a battery of a lower voltage than the power supply, the PCC 

must increase the voltage from the battery in order to power the radio, and reduce the 

voltage from the power supply in order to charge the battery appropriately. 

Combining all of these possibilities, as the claims require, a PCC that enables the 

desired functionality must contain circuitry to both increase and reduce voltages. 

Accordingly, a proper construction for “power conversion circuit” must include the 

requirement that the circuit can both increase and reduce voltages. 

B 

Beyond the language of the claims, the specification also provides meaningful 

guidance when construing claim terms. Phillips, 415 F.3d at 1317. The claim, however, 

should contain a linguistic “hook,” or some point to tie it to a concept from the 

specification. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1310 (Fed. Cir. 

2005) (quoting Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1248 

(Fed. Cir. 1998)). Here, the claim does exactly that by using the term “conversion.” 

While the specification of the patents here does not use the exact phrase “power 

conversion circuit,” it does touch on conversion a limited number of times. First, the 

Summary of the Invention states: 

An optional variable voltage feature permits use of battery packs lower or 

higher than 12 volts to be used by the radio. The variable voltage feature 

2007-1243, -1244 6
includes a socket having a plurality of contacts mating with an adapter, 

matching predetermined requirements of a DC source battery pack, and a 

double pole single throw on/off switch controlling a DC/DC power source 

converter for supplying power to said radio. 

’059 patent, col.2 ll.57–64 (emphasis added). Then, describing the preferred 

embodiment, it states: 

In an alternate embodiment, additional circuitry is provided to permit the 

use of battery packs lower or higher than 12 volts to be used in radio 1. In 

this embodiment, socket 45 is replaced with socket 70 which now has six 

contacts mating with adapter 61, which match the requirements of a 

particular battery pack 60. The on/off switch is now upgraded to a double 

pole single throw variety for controlling output DC/DC converter 68 for 

battery operation of radio 1. This extra pair of contacts eliminate the 

“standby” losses of converter 68 when radio 1 is turned off. 

Charging DC/DC converter 69 is selected via relay 70 when the charger is 

turned on. Although electromagnetic relay 70 is shown, a solid state relay 

can be used instead. If battery pack 60 has a voltage rating higher than 12 

volts (e.g. 18 volts), the output converter 68 is a step down type reducing 

the battery voltage to a nominal 12 volts while charge converter 69 is a 

step up converting a nominal 12 volts from the charger to a nominal 18 

volts at the battery. If the battery voltage were lower than 12 volts (e.g. 9.6 

volts), the output converter 68 is a step up type while the charging 

converter 69 is a step down type. Diodes 56 and 67 are used for power 

steering while diodes 66 and 65 are used for DC/DC converter isolation. 

Id. at col.4 l.55 to col.5 l.10 (emphases added). The specification does not elsewhere 

use a form of “convert” in the context of permitting various voltage batteries. Both 

portions of the specification cited above describe a circuit that adjusts voltage using a 

DC/DC converter. In the first example, from the Summary of the Invention, the patent 

describes a circuit that adjusts the power of the battery to allow it to power the radio. In 

the second example, from the Detailed Description, the patent describes a circuit that 

both raises and lowers voltage, to allow the battery to power the radio and to allow the 

power supply to charge the battery. 

B&D argues that only the preferred embodiment contains a DC/DC converter and 

2007-1243, -1244 7
that we should not limit construction of the “power conversion circuit” to such a device. 

But we can find nothing in the patent that discloses a PCC other than the one shown in 

the preferred embodiment. Indeed, at oral argument, counsel for B&D admitted that 

Figure 6 of the patents, illustrating a more general embodiment, does not contain a 

power conversion circuit. Oral Arg. at 20:58–21:02, available at: 

http://www.cafc.uscourts.gov/oralarguments/mp3/2007-1243.mp3 (“[I]t’s not present in 

[figure] six. There’s no conversion circuit in six.”). The specification consistently 

describes a circuit that has the ability to change voltages using a DC/DC converter. For 

that reason, we conclude that the specification requires that a “power conversion circuit” 

includes a DC/DC converter. 

While the specification requires a “power conversion circuit” to include a DC/DC 

converter, it does not limit the PCC to only such a device. Both instances in the 

specification discussing conversion also describe a circuit containing other electrical 

components such as switches. Additionally, the specification does not consistently 

require multiple DC/DC converters in the PCC, as the appellant urges. The first use of 

“converter,” in the Summary of the Invention, describes only a single converter. We 

therefore reject Bosch’s suggestion that the proper construction requires two DC/DC 

converters. 

C 

The prosecution history further confirms the correct construction of “power 

conversion circuit.” Remarking on an amendment submitted to the examiner after an 

interview, the applicant described the invention as including a “power conversion circuit 

that adjusts the voltage that is either supplied by the [power supply] to the [battery], or 

2007-1243, -1244 8
supplied by the [battery] to the radio. In the preferred embodiment, the power 

conversion circuit is implemented by a pair of DC/DC converters . . . .” ’059 patent 

prosecution, Amendment of Apr. 26, 2001, at 7. This statement confirms that (1) the 

PCC must adjust voltage up and down and (2) the PCC in the preferred embodiment 

uses two DC/DC converters. As we have discussed, the surrounding claim language 

also requires the PCC both increase and reduce voltage. And the fact that the preferred 

embodiment uses two DC/DC converters comports with the specification’s requirement 

that the PCC includes a DC/DC converter. In sum, the prosecution history confirms the 

proper construction of “power conversion circuit” provided by the claim language and 

the specification. 

D 

As mentioned, above, the district court’s reliance on claim differentiation cannot 

survive the definition for “power conversion circuit” provided by the claim, the 

specification, and the prosecution history. Further, our construction—requiring circuitry 

to increase and reduce voltages and requiring a DC/DC converter—does not make 

redundant the requirement in dependent claim 2 of the ’059 patent that the PCC 

generates a third voltage sufficient to power the radio. A PCC meeting the limitations of 

claim 1 may generate a voltage equal to that of the power supply, and thus would not 

satisfy the “third voltage” requirement of claim 2. 

Therefore, because the dependent claims do add additional limitations, and 

because even if they did not, the presumption of scope applied to the independent 

claims under the doctrine of claim differentiation here does not overcome the definition 

from the intrinsic record, we reject the district court’s reliance on that doctrine. Giving 

2007-1243, -1244 9
appropriate consideration to the surrounding claim language, the specification, and the 

prosecution history, we construe “power conversion circuit” as a circuit that can increase 

and reduce DC voltages and includes a DC/DC converter. 

E 

Bosch also argues that the district court erred by refusing to construe the 

“regardless” claim term. Besides proposing a boundless construction, Bosch also 

argues that the term should require operation on any battery voltage available at the 

time of the invention. We reject Bosch’s arguments, and instead agree with B&D and 

the district court that the plain meaning of “regardless” suffices here. As B&D points 

out, the claims describe a “range” of battery voltages, which provides a limiting context 

to the “regardless” term. 

II 

Because the district court incorrectly construed “power conversion circuit,” we 

vacate the infringement verdict and the willfulness finding and remand for further 

proceedings to resolve the factual question of infringement. We reject Bosch’s 

argument that we should hold as a matter of law that its combination radios cannot 

infringe claim 1 of the ’925 patent based on the “charger” limitation. 

III 

Bosch also argues on appeal that the jury instructions regarding the standard for 

obviousness require a new trial or even reversal of the jury’s verdict finding the claims 

nonobvious. In Bosch’s view, the Supreme Court’s rejection of the teaching, 

suggestion, motivation test in KSR International Co. v. Teleflex, Inc., 127 S. Ct. 1727 

(2007), requires us to grant Bosch a new trial on obviousness. Although Bosch did not 

2007-1243, -1244 10
object at trial, Seventh Circuit precedent holds that, in order to preserve an issue for 

appeal, a party does not have to object to jury instructions that later become erroneous 

under a change in the law. Phillips v. Cameron Tool Corp., 950 F.2d 488, 291 (7th Cir. 

1991). 

We agree with Bosch that the jury instructions stated a standard inconsistent with 

KSR—that Bosch had to show a rigid and inflexible “motivation or suggestion.” This 

court has already said that the teaching, suggestion, motivation test remains good law 

for obviousness, only a rigid application of that test is problematic. The problem for 

Bosch on appeal, however, is that it fails to identify evidence in the record that could 

support a jury’s verdict of obviousness even under the correct standard. 

Additionally, because our altered claim construction narrows the district court’s 

construction, it therefore does nothing to bolster Bosch’s invalidity arguments. 

Accordingly, we affirm the jury’s verdict of non-obviousness. 

IV 

Bosch further disputes the district court’s denial of Bosch’s claim of inequitable 

conduct. The district court found a lack of intent to deceive on the part of the 

prosecuting attorney. Inequitable Conduct, slip op. at 4–14. While Bosch argues that 

related co-pending applications not disclosed during prosecution of the ’095 and ’925 

patents would have provided information material to patentability, we do not find an 

abuse of discretion in the trial court’s decision. Due to their filing date, the references 

could not have served as prior art to the application here. Further, no evidence 

demonstrates the examiner would have declared an interference. Indeed, according to 

Bosch’s expert, the priority dates of the two applications differed too much for the 

2007-1243, -1244 11
examiner to have declared an interference. Finally, even if Bosch could establish 

materiality, nothing indicates the district court would have or should have changed its 

conclusion on intent. 

V 

In light of our disposition of the claim construction issue on appeal, and 

consequent vacating of the infringement verdict, the issue of willful infringement 

becomes moot. Should the trial court need to revisit the issue on remand, however, we 

note that, as Bosch argues on appeal, our recent en banc decision in In re Seagate may 

well affect the court’s willfulness analysis. 497 F.3d 1360 (Fed. Cir. 2007). 

While B&D correctly states that Seagate did not affect Bosch’s argument that it 

did not have knowledge of the patents in suit, that would not necessarily resolve the 

issue. The district court, in deciding the enhanced damages issue, recognized that 

“Bosch had legitimate defenses to Black & Decker’s infringement claims.” Further, the 

jury found two claims invalid as obvious, showing that the appellant also made a 

credible invalidity argument. 

As we stated in Seagate, the patentee must prove the “infringer acted despite an 

objectively high likelihood that its actions constituted infringement of a valid patent.” Id. 

at 1371. Under this objective standard, both legitimate defenses to infringement claims 

and credible invalidity arguments demonstrate the lack of an objectively high likelihood 

that a party took actions constituting infringement of a valid patent. 

VI 

In light of our conclusion with respect to claim construction, the cross-appeal 

regarding the scope of the permanent injunction becomes moot. Should the issue arise 

2007-1243, -1244 12
2007-1243, -1244 13

again on remand, however, we note that B&D has raised serious questions about the 

district court’s exclusion of certain products from the scope of the injunction. 

At trial, the district court excluded evidence of Bosch’s PB10-DC “Advanced” 

combination radio from trial. Then, when issuing the permanent injunction, the court 

explicitly excluded from that injunction the Advanced product. Injunction Order. The 

exclusion of evidence from trial may have appropriately penalized B&D for failing to 

update its interrogatory answers when it learned of the Advanced product; the exclusion 

prevented B&D from automatically applying an infringement verdict to that product. The 

injunction, however, took the much more significant step of requiring B&D to assert 

claims against the Advanced product in a new suit without regard to its similarity to the 

products explicitly included in the injunction. The district court provided no rationale to 

explain why B&D should not have the opportunity to demonstrate that the Advanced 

product constitutes nothing more than a colorable variation from the enjoined products. 

Int’l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312, 1317–18 (Fed. Cir. 2004). 

CONCLUSION 

For the foregoing reasons, we affirm-in-part, vacate-in-part, and remand to the 

district court for further proceedings.