Persawvere v. Milwaukee Electric Tool: Band Saw Patent Settled After 1,406 Days
Persawvere, Inc. asserted US8607681B2 against five Milwaukee Electric Tool cordless band saw models — including the M12 and M18 FUEL lines — in the District of Delaware. After nearly four years of litigation, the parties reached a settlement and stipulated dismissal with prejudice, with the court retaining jurisdiction to enforce the settlement terms.
A Cordless Power Tool Patent Dispute That Ended at the Settlement Table
On 19 March 2021, Persawvere, Inc. filed suit against Milwaukee Electric Tool Corporation in the District of Delaware before Judge Gregory B. Williams, alleging infringement of US8607681B2. The complaint targeted five Milwaukee cordless band saw products: the 2429 M12 Sub-Compact Band Saw, the 2529 M12 FUEL Compact Band Saw, the 2629 M18 Cordless LITHIUM-ION Band Saw, the 2829 M18 FUEL Compact Band Saw, and the 6242-6 Compact Band Saw — spanning Milwaukee’s core professional-grade portable cutting line.
The case closed on 23 January 2025 via a stipulated dismissal with prejudice, entered by agreement of both parties. The court’s order extinguishes all claims and counterclaims that were made or could have been made, permanently barring re-litigation of the same disputes. Critically, the court retained jurisdiction to enforce the underlying Settlement, Release and License Agreement — strongly suggesting a negotiated license or financial resolution rather than a pure walk-away.
The 1,406-day duration suggests the parties litigated through substantive phases — likely including claim construction and discovery — before reaching terms. The each-party-bears-own-costs provision is consistent with a negotiated settlement rather than a judicial cost award. The financial and licensing terms of the underlying agreement remain confidential, leaving the precise commercial outcome unknown from the public record.
Filing to Dismissed with Prejudice in 1406 days
1,406 days — nearly 4 years, above median for Delaware patent cases
Dismissed with prejudice: what the stipulated order means for both parties
Stipulated dismissal with prejudice signals a concluded deal
A dismissal with prejudice entered by stipulation means both parties jointly requested the court to close the case permanently. Unlike a unilateral voluntary dismissal, a stipulated dismissal typically reflects a negotiated resolution. The ‘with prejudice’ designation bars Persawvere from re-asserting the same patent claims against Milwaukee on the same accused products — the dispute is legally final.
Permanent bar on re-filingCourt retaining jurisdiction implies Persawvere secured licence terms
The court’s express retention of jurisdiction to enforce the Settlement, Release and License Agreement is a strong indicator that Persawvere obtained a license — likely with royalty or lump-sum consideration — rather than simply dropping its claims. This structure is standard where the patent holder extracts value and needs judicial enforcement as a backstop. The specific financial terms are not public.
Likely licence securedMilwaukee obtains release and certainty across its band saw line
By entering the Settlement, Release and License Agreement, Milwaukee Electric Tool secured a release from all claims that were or could have been made under the asserted patent — covering its full range of accused M12 and M18 band saw products. This provides commercial certainty to continue selling those products. The each-party-bears-own-costs term avoided any additional financial exposure beyond the settlement itself.
Full product line releasedCordless tool makers face a validated assertion pattern on band saw IP
Persawvere’s willingness to pursue litigation for nearly four years before settling — and to secure a license agreement with court-retained enforcement jurisdiction — suggests the patent withstood early challenge. Competitors in the cordless portable cutting tool space should treat US8607681B2 as a potentially active enforcement asset. Any product overlapping the patent’s claims warrants an FTO review.
Enforcement risk remainsFull party and counsel information
| Role | Name | Type | Detail |
|---|---|---|---|
| Plaintiff | Persawvere, Inc. | Company | Patent assertion entity — holder of US8607681B2, cordless band saw technologySearch in Eureka ↗ |
| Defendant | Milwaukee Electric Tool, Corporation | Company | Milwaukee Electric Tool Corporation — manufacturer of professional cordless power toolsSearch in Eureka ↗ |
| Plaintiff counsel | Grayson P. Sundermeir | Attorney | Counsel for Persawvere, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Kelly A. Del Dotto | Attorney | Counsel for Persawvere, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Kurt L. Glitzenstein | Attorney | Counsel for Persawvere, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Susan E. Morrison | Attorney | Counsel for Persawvere, Inc.Search in Eureka ↗ |
| Plaintiff counsel | Warren K. Mabey , Jr. | Attorney | Counsel for Persawvere, Inc.Search in Eureka ↗ |
| Plaintiff law firm | Fish & Richardson PC | Law Firm | Representing Persawvere, Inc.Search in Eureka ↗ |
| Defendant counsel | Amy Michele Dudash | Attorney | Counsel for Milwaukee Electric Tool, CorporationSearch in Eureka ↗ |
| Defendant counsel | Jason C. White | Attorney | Counsel for Milwaukee Electric Tool, CorporationSearch in Eureka ↗ |
| Defendant counsel | Kevin J. Spinella | Attorney | Counsel for Milwaukee Electric Tool, CorporationSearch in Eureka ↗ |
| Defendant counsel | Maria E. Doukas | Attorney | Counsel for Milwaukee Electric Tool, CorporationSearch in Eureka ↗ |
| Defendant counsel | Michael T. Sikora | Attorney | Counsel for Milwaukee Electric Tool, CorporationSearch in Eureka ↗ |
| Defendant counsel | Scott D. Sherwin | Attorney | Counsel for Milwaukee Electric Tool, CorporationSearch in Eureka ↗ |
| Defendant law firm | Morgan, Lewis & Bockius, LLP | Law Firm | Representing Milwaukee Electric Tool, CorporationSearch in Eureka ↗ |
| Presiding judge | Judge Gregory B. Williams | Judge | Delaware District CourtSearch in Eureka ↗ |
Official order — verbatim text
The dismissal order is deliberately comprehensive in scope: it extinguishes not only claims that were made but all claims ‘that could have been made’ — a standard with-prejudice formulation designed to prevent claim-splitting or re-litigation under related theories. The court’s separate and explicit retention of jurisdiction over the Settlement, Release and License Agreement is legally significant; it elevates the settlement to a court-supervised instrument, giving either party a direct enforcement mechanism without filing a new action.
US8607681B2 — Cordless Band Saw Technology
US8607681B2, filed under application number US11/857772, covers technology in the cordless portable band saw space. The patent’s assertion against five distinct Milwaukee products across two voltage platforms (M12 and M18) indicates the claims are drafted at a level of generality capable of reading on band saw mechanisms common across compact and full-size form factors. The application’s filing date establishes priority against a generation of cordless cutting tools developed as lithium-ion battery platforms matured.
The strategic value of this patent lies in its apparent breadth across product tiers. With Milwaukee’s full band saw SKU range accused — from the sub-compact 2429 to the full-size M18 FUEL 2829 — the patent appears to cover fundamental design or mechanical elements rather than a narrow feature. For other cordless tool manufacturers active in the band saw segment, this asset represents a genuine enforcement risk, particularly given the licence outcome achieved after sustained litigation.
Should you run an FTO against US8607681B2?
Any manufacturer, retailer, or OEM operating in the cordless portable band saw market should treat US8607681B2 as an active enforcement asset. The patent survived approximately four years of Delaware litigation against a well-resourced defendant before extracting a court-supervised licence. Product teams developing cordless band saws — especially those offering both sub-compact and full-size models — face the highest exposure and should conduct claim mapping before product launch or market entry.
PatSnap Eureka’s FTO Search Agent enables R&D and IP teams to map product designs against the claims of US8607681B2, identify design-around opportunities, and monitor continuation or related applications that may extend the patent family’s reach. Eureka can also surface prior art that may support an IPR petition if invalidation remains a strategic option for potential defendants.
Run a freedom-to-operate analysis on US8607681B2 to assess your product’s exposure
Run FTO in Eureka →Similar Cordless Power Tool Patent Cases in Delaware District Court
Explore related patent infringement actions involving cordless power tool and cutting tool technology litigated in the District of Delaware.
What this case signals for the cordless power tool IP landscape
A four-year Delaware litigation ending in a court-supervised licence agreement raises the enforcement profile of band saw IP across the power tools sector.
Court-retained jurisdiction transforms a settlement into an ongoing obligation
When a Delaware court retains jurisdiction over a Settlement and License Agreement, any future breach — including unpaid royalties or unlicensed product expansion — can be enforced by motion rather than a new lawsuit. For Milwaukee, this means ongoing compliance obligations. For competitors watching from the sidelines, it confirms the patent holder has secured enforceable rights.
Nearly four years of litigation suggests substantive patent validity was tested
Cases that settle after 1,400+ days typically survive early dispositive motions and claim construction. The fact that Milwaukee did not secure an early exit — and ultimately entered a licence — is consistent with a patent that presented credible infringement and validity positions. This duration pattern is a signal that US8607681B2 may be difficult to invalidate on the papers alone.
Persawvere v Milwaukee — key questions answered
Persawvere asserted US8607681B2 (application no. US11/857772) covering cordless band saw technology. The patent was alleged to be infringed by five Milwaukee products: the 2429 M12 Sub-Compact Band Saw, 2529 M12 FUEL Compact Band Saw, 2629 M18 Cordless Band Saw, 2829 M18 FUEL Compact Band Saw, and 6242-6 Compact Band Saw.
The case was dismissed with prejudice on 23 January 2025 by stipulation of both parties, after 1,406 days of litigation. The court retained jurisdiction to enforce a Settlement, Release and License Agreement — indicating the parties reached a negotiated resolution, likely involving a patent licence. Financial terms were not made public.
When a district court retains jurisdiction over a settlement agreement, either party can return to that court by motion — rather than filing a new lawsuit — to enforce the agreement’s terms. In patent cases this typically covers royalty payments, licensed product scope, and release obligations. It is a standard mechanism when a settlement involves ongoing licence obligations rather than a one-time payment.
Persawvere was represented by Fish & Richardson PC, with attorneys including Grayson P. Sundermeir, Kelly A. Del Dotto, Kurt L. Glitzenstein, Susan E. Morrison, and Warren K. Mabey Jr. Milwaukee Electric Tool was represented by Morgan, Lewis & Bockius LLP, with attorneys including Amy Michele Dudash, Jason C. White, Kevin J. Spinella, Maria E. Doukas, Michael T. Sikora, and Scott D. Sherwin.
Yes. A dismissal with prejudice permanently bars Persawvere from re-filing the same claims against Milwaukee on the accused band saw products. The order expressly extinguishes all claims and counterclaims ‘that were made or could have been made,’ which forecloses related theories as well. However, Persawvere retains the right to assert the patent against other parties not covered by the settlement.
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