                        Note: This disposition is nonprecedential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                       NOTE: This disposition is nonprecedential.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-CV-

7955 (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
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.




2007-1243, -1244                              13
