Aaron pointed me towards a news article (thank you!), which describes a new lawsuit between Emerson Electric and TTI.
To better understand the relationship between the two companies, TTI, or Techtronic Industries, owns Milwaukee Tool and several other tool brands. TTI has a licensing agreement with Emerson, allowing TTI to develop and produce Ridgid power tools, with this agreement going back to 2003. Emerson owns the Ridgid brand and markets tools under that label, mainly tools aimed at professional industries. Emerson also produces Ridgid wet/dry vacuums.
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(You might want to check out this post: Tool Brands: Who Owns What? A Guide to Corporate Affiliations for more on the companies.)
So, TTI owns Milwaukee Tool and also develops and produces Ridgid power tools at Home Depot. Emerson’s Ridgid brand also offers their own power tools, typically specialty tools aimed at the trades, such as press tools and crimpers.
The official complaint, which I couldn’t view due to a paywall, was filed in the Delaware District Court, with case no. 1:20-cv-00100. It was filed by the Ridge Tool Company (Ridgid/Emerson) against Milwaukee Electric Tool Corporation (TTI) and also Metco Battery Technologies.
Investor news channels are reporting that this is a pre-emptive lawsuit that aims to establish that certain Emerson/Ridgid cordless power tool charging technologies won’t infringe on patents held by Milwaukee Tool.
SeekingAlpha adds that Milwaukee had sent letters over the summer alleging infringement “particularly by Ridgid’s 18V and 12V Li-ion products.”
Ridge Tool is seeking a Declaratory Judgment, with the outcome to determine whether Emerson’s Ridgid developments are infringing upon Milwaukee Tool Li-ion battery tech patents or not.
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This reads to me that Milwaukee alleged infringement, and Ridgid is seeking for a court to step in and declare that they are not infringing upon Milwaukee Tool patents. Basically, Ridgid filed their suit now, rather than finding themselves on the defendant side of an infringement suit.
It’s an interesting bit of news, but here’s what I’m wondering – is all this about existing Ridgid 12V and 18V Li-ion cordless power tools and technologies, or tools under development? OR, is it about existing Ridgid products and products Milwaukee has developed or been development that gave them reason to no longer ignore potential infringement? Milwaukee has been increasing their spread into traditional Ridgid tool markets, such as with their new MX Fuel drum machine drain cleaner.
To dig deeper, I paid the fee to access the 10-page filing.
Notable Details from the Lawsuit Filing
(Unfortunately I can’t link to the document, since it’s only available behind 3rd party paywalls or PACER via a fee.)
July 22, 2019: Milwaukee sent a legal letter to Ridge Tool, alleging they:
have become aware that Ridgid presently makes, imports, sells, or offers for sale certain lithium-powered battery packs for handheld cordless power tools, together with the power tools designed to work with such packs, that practice the technology disclosed and claimed in the Milwaukee Patents.
One of the patents in question dates back to 2009, and the other two date back to 2011:
- 7,554,290: Lithium-Based Battery Pack for a Hand-Held Power Tool
- 7,999,510: Lithium-Based Battery Pack for a High Current Draw, Hand Held Power Tool
- 7,944,173: Lithium-Based Battery Pack for a High Current Draw, Hand Held Power Tool
The letter alleged infringement by:
Ridgid’s 18V Lithium Ion products (including the RD44698 4.0Ah battery pack, the RD44693 2.0 Ah battery pack, the RD44848 2.0Ah battery pack and charger, and the RD44853 kit of two 2.0Ah battery packs and charger), and its 12V Lithium Ion products (including the RD55183 battery pack).” The Letter asserted that “[e]ach of these products infringes at least one claim of each of the Milwaukee Patents.
The legal letter also stated:
that “Milwaukee takes protection of its intellectual property seriously,” that “Milwaukee already successfully enforced the Milwaukee Patents against other major players in the handheld cordless power tool industry,” and that Ridge must take a non-exclusive license to the Milwaukee Patents “to allow Ridgid to utilize the technology in its product offerings.”
August 20, 2019, a follow-up letter mentioned that:
a refusal to respond would leave us with no choice but to pursue other options to protect Milwaukee’s intellectual property rights.
Because of all this, Ridge/Ridgid believed that Milwaukee would have likely sued them if they didn’t agree to Milwaukee’s licensing demands.
Now here are important parts – Ridge is claiming that they are not infringing upon any of the patents, but are also arguing that the patents are invalid. For each of the patent infringement claims, they are seeing judgement that they: has not infringed, and does not infringe, and/or that the claims of the patents are invalid.
Possible Outcomes
It seems to me – and keep in mind I’m not a law professional – that there are several possible outcomes.
- The court finds that Ridge didn’t and doesn’t infringe upon Milwaukee’s patents
- The court finds that Ridge did and does infringe upon Milwaukee’s patents
- The court deems one or more of Milwaukee’s patents to be invalid and unenforceable
- Settlement outside of court
Will any of this affect TTI and Emerson’s Ridgid power tool and cordless power tool agreement? Probably not.
But why did Milwaukee issue notices to Ridgid/Emerson NOW? Their battery-powered tools are not new. For instance, consider the Ridgid RE 6 interchangeable-head electric multi-tool that came out in 2014, which looks to be kitted with the RD44693 2.0Ah battery pack that is included in the infringement allegations.
It seems highly unlikely that Milwaukee’s patents will be under any serious threat of being invalidated. Milwaukee has sued and presumably won suits against other cordless power tool brands. I haven’t looked up their litigation history, but the fact that some other brands’ Li-ion power tool batteries are covered under Milwaukee patents suggests that licensing agreements are in place.
If Milwaukee’s patents were deemed valid and enforceable, they will likely continue to be deemed valid and enforceable.
Remaining Questions
We know the “what,” but not the “why.”
Why is Ridge seeking to have a court settle this matter? What is at stake here – licensing fees, or is there more to it?
All of the details make sense, but the context is missing. Why did Milwaukee issue legal notices to Ridge/Ridgid only a few months ago? What is the bigger picture behind the timing?
I took this photo of Milwaukee’s MX Fuel sewer drum machine next to a painted-over Ridgid corded model. Milwaukee and Ridgid are now direct competitors in a number of professional tool markets. Is Ridgid working on new cordless technologies in an effort to stymie any loss in market share to Milwaukee or other cordless power tool competitors? If that’s the case, alleging infringement and seeking a licensing agreement now, rather than waiting until the stakes are higher, could be considered a logical and strategic move by Milwaukee.
It will be interesting to see how this disagreement and the case will be resolved.
John B
Sounds like a pissing contest to the equivalent of Buick suing GM because GM used their toggle switch. Or, Milwaukee wants out of the contract with Ridgid.
Skye A Cohen
I hate to sound like a conspiracy theorist but could this perhaps be a bit of Kabuki theater? Sometimes a big part of setting a precident is the right lawsuit, the perfect one to frame an argument a certain way, and to frame the opposing argument in a certain way so as to force the judgement in a certain direction. Could this be a lawsuit among allies in search of a particular judgement and precident?
John B
So a coup to make all GM vehicles use the same toggle switch type of scenario while making Ford and everyone else modify theirs. Or some such.
Marc
Stuart,
Interesting. Thanks for posting this. In Possible outcomes, #1 & 3 are poorly expressed :
1) The court finds that Ridge did now and does not infringe upon Milwaukee’s patents
Did you mean “did NOT”?
3) The court deems one or more of Milwaukee’s patents as invalid and enforceable.
Its either “valid and enforceable” or “invalid and unenforceable”. Can’t have it both ways.
Marc
Stuart
Thanks, agreed, fixed typos and wording.
fred
Thanks Stuart for this interesting bit of digging.
My take is that Emerson/Ridge Tool may be concerned that TTI/Milwaukee is continuing to make inroads into the traditional Ridgid domain of professional plumbing tools – with press tools, PEX expanders and now drain-line augers. Then to add insult to injury – TTI’s patent claims may be thought of as encroaching on Ridgi’s ability to sell their line of cordless press tools etc.
The Emerson-Ridgid thing goes back many years. The Ridgid name – hails from North Ridgeville Ohio – where the company was founded in 1923. Emerson acquired them in 1966. In the 1950’s and 1960’s Emerson produced many of the stationary power tools sold by Sears under the “Craftsman” brand name. When Sears threw them over in favor of other (mostly Taiwanese) OEM’s. Emerson cut a deal with Home Depot – licensing the Ridgid name – and producing tools to be sold at Home Depot. Along the way TTI came into the picture. HD was also allowed to contract with other OEM’s to produce tools using the Ridgid brand name in areas that did not compete with Emerson/Ridgid plumbing tools. That’s why you might see a Ridgid brand shovel (made by Ames), a Ridgid brand hole saw (made by Disston or RAF) or a Ridgid brand extension cord (made by Cerro Wire) on sale at Home Depot. The agreement between HD and Emerson – also means that Ridgid brand pipe wrenches sold at HD come from the Ridge Tool Co – and HD uses Husky or HDX for their house brand pipe wrenches.
Bonson
Really interesting article. Thanks for the research especially summarizing the stuff down for our consumption.
Pure speculation but signs are pointing to Emerson wanting to re-position the Ridgid power tool brand, or expand it. The licensed Ridgid stuff is in a strange spot between consumer/diy and professional brands.
Ridgid’s legacy brand is positioned in the pro market.
TTI clearly invests more into Ryobi/Milwaukee. The licensed Ridgid stuff is stagnating and likely isn’t in the long term strategy for TTI.
My bet is Emerson wants to expand the Ridgid power tool line to other retailers/ markets. Maybe by licensing the brand to someone else or bringing it in house. Doing so would cause them to absorb the existing tools and lifetime warranty coverage.
Stuart
There are 3 main players who could develop and produce cordless power tools for Ridgid’s Home Depot line: TTI, Stanley Black & Decker, Chervon, with TTI and Chervon being the more capable in this regard. TTI is still the best choice. TTI and Emerson parting ways would be a HUGE mistake for both parties and Home Depot, and they all know it; in my opinion there’s near-zero likelihood of this happening now or in the foreseeable future.
mattd
There is an addon for your browser called RECAP ( https://free.law/recap/ ) that if you view something on pacer it will auto upload to that FREE database and can be linked to from there. so if you bought it through pacer then you should get that app so that you can share the docs. here is the suit on recaps site https://www.courtlistener.com/docket/16740811/ridge-tool-company-v-milwaukee-electric-tool-corporation/ it looks like no one has uploaded the docs there yet.
Stuart
Thanks, I’ll look into it.
Adabhael
IANAL but, I am pretty sure brands must defend their trademarks, or risk loosing them, I don’t believe that applies to patents. That was the whole kerfuffle a few years ago about brands imitating FLUKE’s distinctive color scheme.
Stuart
I can’t find confirmation so I removed that part, thanks!
JoeM
Looks distinctly like a Patent Confirmation to me. For the benefit of both companies, confirming that one company will continue to X, while the other does Y, confirming the Patents used is a shortcut to allowing negotiations between the two companies to further their partnership. It can, and probably does, happen most often when company arrangements have either expiration dates on their contracts, or stipulations for regular revisitation of those contracts, provided in the contracts themselves.
This could be as simple as Rigid ordering a new shape for their batteries going forward, or even simpler, a prelude to TTI buying out the remainder of Rigid FROM Emerson.
It really only gets complicated if one company or the other went ahead and said “Let’s just do this, and deal with the consequences later” only to end up in this place, where the consequences require a court. Otherwise, it all seems very simple, almost regular or redundant to me.
It’s the old two-neighbour argument taught in a lot of law schools. Neighbour A wants to replace a fence that was damaged in a storm, and some of the old fence damaged the lawn on Neighbour B’s side. Being a good neighbour, A goes and buys the supplies to repair the lawn on B’s side, while buying the supplies for the new fence. Neighbour B, on the other hand, wanting to help with the Fence, goes and checks the City Zoning office for permit applications, and boundary markings to save Neighbour A some time.
The unfortunate discovery is that the Fence line is in the wrong place, and has been all along, and Neighbour B has to inform Neigbour A that they’ll have to move the fence, according to the city planning office. They both look at the copy of the two lots, and realize they don’t want the fence where the City wants the fence, because it inconveniences both of them to follow the lot on the map. For example of this, usually an exaggerated number of it being approximately a foot farther onto Neighbour B’s lawn than it was before. Less lawn for Neighbour B, and Neighbour A has already put out all sorts of money for supplies to repair the fence as it was. So what do they do?
It’s a question posed in property law, and most professors ask students to consider that it is not about the legal battle, and that it is about appeals to the law instead. It’s in the best interests of both parties to appeal the boundary location with the City, so that they can get a judgement that favours them both. A doesn’t want B to have less Lawn, and also doesn’t want to have that much more of B’s Lawn to mow. B doesn’t want A to have gone and spent all that money, including the damages to B’s lawn in the first place, only to be told to tear down the fence. So they file for a Judgement to be made. One Neighbour has to make a Claim, the other has to make a Counter-Claim. This allows a Judgement of Law to supercede the Zoning office, leaving only the application for construction of the fence to be filled out (with accompanying fees.) rather than having to go through huge amounts of paperwork and excessive fees on top of all that, just to move the actual ZONE one foot over.
In the case of Milwaukee and Rigid, this sounds more like they’ve already done SOMETHING together, and need a Judgement so they don’t have to re-negotiate something bigger on top of all that. It even has the Claim/Counter-Claim structure of the Law School Two Neighbours scenario. They need a Judgement to override a line set by some other system’s plan. In this case? I think it’s probably Patent Law. Milwaukee needs Rigid to have an absolute line in the sand, declared by a Judge’s Order, to continue doing things a certain way, otherwise they need to renegotiate a partnership one way or another. Sometimes you have to look at a legal situation as a Judgement, not as an Antagonism. No wrong is being claimed, they just want to word it so the Judge will give an order that things are not LEGALLY incorrect in their unique case.
Sorry… Law is one of those little side-fascinations of mine. I have a lot of them.
Stuart
That makes a lot of sense, thank you!
However, reading the filing, Ridge seems to have the stance that Milwaukee sent legal notices and the threat of a suit seemed eminent so they sued for a declaratory judgement pre-emptively. Perhaps this leaves them in a better position regarding a potential settlement or more favorable licensing terms?
With Ridge seeking a court judgement that they’re not infringing or that Milwaukee’s patents aren’t valid, they are in a better negotiating position than if they refused licensing talks and simply waited to defend against (what they saw as) an imminent infringement suit against them.
JoeM
That being the case, Stuart, it still sounds like the two companies did “Something” that is outside what they negotiated the last time they formed any contract. Now it comes down to needing to word it so that a Judge finds it important enough to set an absolute ruling.
This will force both parties to negotiate outside the courtroom, probably earlier than they expected to be doing so the last time.
It does come down to the “Why” part. But, as antagonistic as both parties appear to be, the reality is rarely so aggressive. Maybe it’s as simple as opening the legal departments of both companies to the possibility of expanding the use of newly developed battery tech (Like the MX Fuel giant battery system for industrial equipment.) so that the companies can make equally compatible systems. Or, it may also be a matter of TTI using this as an excuse to take more off of Emerson’s hands via Ridge being mentioned as a separate entity. If it’s as simple as Emerson dangling Ridge/Rigid in front of the court’s face as being something that can be bought, rather than an integral part of their proprietary name, then it opens up negotiations with TTI to acquire Ridge/Rigid from Emerson, either in part, or as a whole, with Licensing Fees involved in some future component.
Remember a while back, when DeWALT came out with that hand-held threader, and it listed that it works with “Rigid” threading heads, as well as having Dewalt ones? DeWALT probably had to get the license to say that from Rigid, even if Rigid used those heads differently than DeWALT did.
Keeping that in mind, what else does Rigid make in the Industrial world that Milwaukee/TTI might be in need of? A frame design? A large industrial tool to be used in the MX Fuel line? A rare, barely used, proprietary bolt or widget? What does Ridge/Rigid have that is in the best interest of both companies to ammend a contract to include from 2020 on forward? Something Milwaukee now does, or COULD do, but their old contract forbids them from using it? Something worth negotiating their BATTERY Patent licensing over?
I don’t know the answer to that, but I do know this only APPEARS Antagonistic. There’s no fines, or financial damages attached anywhere, is there? So, they’re both seeking a ruling by Law. Ruling by Law gets both companies’ Lawyers to refresh Contracts to comply with said rulings. As I said before, sometimes it’s not about wrongdoing, but rather a way to force their way through red tape by Court Order, rather than by filling out all the paperwork to ask that Laws be changed to suit their new agreement.
They both want something that isn’t in their original contracts, and it would be immensely expensive to go back to negotiating them, then filing the changes with the court later, only to have the court reject it. But, if they Sue/Counter-Sue alleging there’s a line that has been crossed, it will force a Judgement. Set a Precedent even. If this order comes down from the court to keep X and Y on either side of a specific line, then both companies are “Forced” to change their contract. They throw their hands in the air like they had no choice, and ORDER their Legal Departments to pull out the contract and change it according to what the “Judgement” ruled necessary.
Oops. I guess Rigid CAN use the MX Fuel battery on their next model of Widget A that they made for 30 years… And I suppose they DO have to “sell” a portion of Ridge to Milwaukee/TTI in order to not break patent law with every new tool that uses it. One Judgement means both companies can “Force” a drastic change in their relationship, without having to spend months, or even years, negotiating with eachother to fit the current laws. They can be granted an INSTANT contract change that achieves the same thing, in a drastically shortened time frame.
Plus, as a bonus, they don’t have to file the extra paperwork or fees attached to ammending a law. The Law did it as a part of the process, and their compliance BECOMES the Fees.
In Law, there’s always lies. We hear this in so many comedy routines, and in our culture. Well, here’s a case where we come face to face with it. Sometimes it’s a Lie left in the open, for everyone to see it’s a lie. Milwaukee is the one that has come out with a new Battery platform, but THEY sue RIGID for infringement on Battery tech patents? Rigid, part of Emerson under the Ridge company, counter-sues because they “Know this is coming” somehow?
Lie. Both companies have talked already. Their old patent use agreement no longer covers SOMETHING. By laying down the scenario that the “Guilty party” is Rigid, this leaves Milwaukee/TTI and Emerson in the perfect position to be ORDERED by LAW to either break up Ridge and sell part of it to Milwaukee, or for Milwaukee to revise the agreement between the two companies over the use of their patents. Their Legal departments no longer have to file appeals to change agreements on the matter, with eachother OR with the FTC. They have a Court Order telling them to do it, end of story. Both companies involved, and the FTC, have to comply with the Court Order, since the Court is the one who writes the laws the FTC enforce to start with.
And, yes… I’m Canadian… So I’m not sure if FTC is the right acronym… Federal Trade Commission? FTC, FCC, Something like that? The people who enforce Anti-trust and Business Practices laws.
David Zeller
I hate to be the one that says this, but what you’re saying really doesn’t make sense to me. A court order cannot contradict a law – they enforce them. The FTC does not get its mandates from the courts, but from legislation. A court may rule on whether the FTC is adhering to a law, but can’t set or change one.
Also, a court is not needed in order for a change to be made to a previous agreement between the two parties, nor does it short circuit anything if the two parties were already jointly seeking the change. They have free will to make the change (barring a thrid party’s involvment, which has not been mentoned here). It would also not preclude negotiations, as terms of the changes would still need to be defined.
As far as your mention of breaking up companies, that is well outside the scope of a simple patent dispute. That is in the realm of monoply prevention, which is not the case here.
David
Stuart
There are several ways this can play out. “Emerson being ordered by law to sell Ridge or parts of it to Milwaukee” is not a possible outcome.
PHILIP JOHN
Look out to all the flexvolt infringers…
Black and yellow . The best tool line is coming for you!
Ryan
My Milwaukee 18 volt 5 mah impact ran a bolt in that a DeWalt max impact 60 volt 9 mAh couldn’t even move.
Corey Moore
There is no DeWalt 60v impact. And no battery makes a 20v tool into a 60v tool.
Jon
Thanks for sharing this Stuart. Fascinating situation. Thanks also to folks like JoeM and Fred for adding detail and color to this. Looking forward to following this and seeing how it pans out. @Stuart – if you do keep following this yourself, please keep us updated! I’ll check into this myself (assuming I don’t get sidetracked / distracted by real work!)
CT
Doesn’t Milwaukee own a patent on 18v Lithium Ion batteries. As in ALL 18v Lithium Ion batteries, even 20v Max. Every other manufacturer has to pay TTI a license fee to use the patent. This is why Lowe’s went with 24v for the Kobalt line so they could circumvent Milwaukee’s patent.
Bob
Interesting indeed. I was told Milwaukee owns the patent or rights to the slide on lithium battery. Everybody (well almost everybody) who has a slide on battery platform pays royalties or liscensing fee’s to Milwaukee. I’m not a lawyer so I don’t know the actual legal terminology.
I found all this out when one of the tool companies we work with used panasonic as their battery OEM when that company decided to upgrade to a slide on style lithium battery. The thought process being that Panasonic provides/provided individual lithium cells to Milwaukee for their battery packs and if Milwaukee sued Panasonic for liscencing fee’s they wouldn’t sell the battery cells to them.
Interesting to see how this suit shakes out. If Milwaukee loses does that mean all other brand batteries will be $.50 cheaper Lol
Skye A Cohen
I hate to sound like a conspiracy theorist but could this perhaps be a bit of Kabuki theater? Sometimes a big part of setting a precident is the right lawsuit, the perfect one to frame an argument a certain way, and to frame the opposing argument in a certain way so as to force the judgement in a certain direction. Could this be a lawsuit among allies in search of a particular judgement and precident?
Ian
To me, it sounds like TTI developed some battery tech and used it in TTI-Ridgid tools and that Emerson copied that to their own and other ODM Ridgid tools and Milwaukee is asserting that Emerson cant do that, only their TTI Ridgid Products can use that tech for free.
That being said ,
It smells to me like TTI is trying to lock Emerson’s Ridgid products ( self and ODM supplied) into buying any tools and batteries that incorporate that tech , from TTI or to pay a fee they haven’t been, to use it for non TTi ridgid products.
OR.
TTI is seeking to use this as leverage towards ending their relationship.
I seriously doubt TTI is interested in acquiring the Ridgid brand and licensing as it would put even MORE of their eggs in the same basket ( Home Depot).
They’re trying to find other outlets as demonstrated by the Hart deal with walmart.
And if they did buy Ridgid from Emerson would they still be locked into HD ? The deal may end with a transfer, or could be persistent.
Would that free up Milwaukee from any ties to HD so they could move Ridgid completely into the Pro space and shop Milwaukee to a competing Big Box store like Lowes or Menards ?
Lowes is heavily partnered with SBD , and Chervon and with the way they have squeezed Craftsman into the flooring plans , its doubtful they would or could shoehorn Milwaukee into the stores too. So what would TTI gain from buying Ridgid out from Emerson ? Seems like a deal end idea to me. Unless Walmart wanted a Prosumer branding above Hart but that seems both pie in the sky and premature considering they are just beginning their first foray out of craptastic tools into a captive better product line.
Corey Moore
I expect Milwaukee to counter sue with superior suites, once again disrupting the litigation industry with revolutionary innovation, and bringing the world’s first court victory*!
Chris
??? I like that one
littlehead
If it hasn’t been mentioned yet above, can see some of the details. Here are 3 patents linked to the case, and the request:
US20090087729A1
US20080012530A1
US20110114350A1
WHEREFORE, Plaintiff Ridge Tool Company prays for the following judgment and relief:
A. A declaration that Ridge has not infringed, and does not infringe, either directly or indirectly, any valid claim of the Milwaukee Patents, either literally or under the doctrine of equivalents;
B. A declaration that the asserted claims of the Milwaukee Patents are invalid;
C. An order declaring that this case is exceptional and awarding Ridge reasonable attorneys’ fees and costs under 35 U.S.C. § 285; and
D. Any other equitable and/or legal relief that this Court may deem just and proper.
Brian M
These always end up being a settlement in the form of licensing agreement that has little to no impact to the end users…except presumably price. We can’t really be sure that it ends up costing us money because the biggest cases are in the phone industry and costs of that technology are always rising due to multiple variables…but it’s pretty naive to assume that any large company will eat a licensing fee without passing on the cost (exponentially) to the end user.
Keith Refior
It’s all about Milwaukee having a patent on 18V batteries. Ridiculous that they were granted something that obvious in the first place.