Claim Construction Error Requires Reversal and Remand – The National Law Review

wp header logo 1523
Spread the love

The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment ruling based on a claim construction error because nothing in the claims or specification of the asserted patent supported the district court’s overly narrow interpretation of the disputed claim term. Evolusion Concepts, Inc. v. HOC Events, Inc. d/b/a Supertool USA, Case No. 21-1963 (Fed. Cir. Jan. 14, 2021) (Prost, Taranto, Chen, JJ.); Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc., Case No. 21-1987 (Fed. Cir. Jan. 14, 2021) (Fed. Cir. Jan. 14, 2021) (Prost, Taranto, Chen, JJ.).
Evolusion owns a patent directed to a device and method for converting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. A detachable magazine allows a user to fire the weapon until the magazine is depleted, then release the magazine, insert a new magazine and resume firing. In contrast, a fixed magazine can be removed and replaced only by disassembling certain nonmagazine parts of the firearm, which slows the rate of fire. The specification states that firearms with detachable magazines are likely to face increased legal restrictions, noting that bills recently introduced in US Congress would have banned semi-automatic weapons with detachable magazines. The claims of the patents recite, among other limitations, a “magazine catch bar.”
Evolusion sued Juggernaut for infringement. Juggernaut asserted invalidity and noninfringement. The parties cross-moved for summary judgment relating to infringement of the device claims, agreeing that the question of infringement depended entirely on whether the claimed “magazine catch bar” included a factory-installed (OEM) magazine catch bar. The district court concluded that the term “magazine catch bar,” as used in the claims and specification, excluded an OEM magazine catch bar. The court’s conclusion was based primarily on the sentence in the specification that states: “The invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” The court reasoned that the “magazine catch bar” of the invention could not be an OEM magazine catch bar since the OEM magazine was one of the components removed to install the invention. Based on the construction, the court concluded that Juggernaut did not literally infringe the patent. The court also found that Juggernaut could not infringe under the doctrine of equivalence because Evolusion had dedicated a factory-installed magazine catch bar to the public by disclosing, but not claiming, this embodiment.
Evolusion also sued Supertool for infringement. When Supertool failed to respond to the complaint, the district court clerk entered a default under Rule 55(a) of the Federal Rules of Civil Procedure. With the requests for relief not yet adjudicated, Evolusion moved for a “default judgment” under Rule 55(b), but the court denied the motion. In its denial, the court, citing its ruling in the Juggernaut case, stated that Evolusion failed to state a viable claim for infringement against Supertool because its products also required reusing the factory-installed magazine catch bar. Evolusion appealed the Juggernaut and Supertool rulings.
The Federal Circuit reversed the noninfringement ruling based on claim construction error. The Court explained that nothing in the language of the device claims limited the scope of the generic term “magazine catch bar” to exclude one that was factory installed. The Court rejected Juggernaut’s argument that a method claim’s recitation of the steps of removing all parts of the factory-installed magazine release button assembly required that the “magazine catch bar” not be the factory-installed magazine catch bar, explaining that nothing in the method claim required “discarding” the OEM catch bar or installing a “new” or “different” catch bar. Thus, the device claims were broad enough to encompass a magazine catch bar that could either be the removed catch bar or a new or different catch bar.
The Federal Circuit found that the specification also supported this ordinary meaning, explaining that nothing in the specification limited the scope of a “magazine catch bar” to exclude factory-installed catch bars as long as it achieved the fixed-magazine goal. The Court also concluded that it made no difference that the disclosed embodiments did not illustrate OEM magazine catch bars, explaining that nothing in the specification suggested that factory (or OEM) origin of a catch bar disqualifies it from being part of the invention if, as a structural matter, it is a magazine catch bar under the ordinary meaning. The Court further rejected the district court’s reliance on the sentence from the specification that the “invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention” because nothing in the specification precluded re-installation of a factory-installed magazine catch bar.
In light of the intrinsic evidence, the Federal Circuit construed the term “magazine catch bar” according to its ordinary meaning, which includes a factory-installed magazine catch bar. The Court concluded that the construction not only required reversal of the grant of summary judgment to Juggernaut, but also required reversal of the denial of summary judgment of infringement to Evolusion as to the device claims, because the parties agreed that direct infringement of those claims was established if the term “magazine catch bar” was construed to include a factory-installed magazine catch bar.
The Federal Circuit also vacated the district court’s denial of default judgment as to Supertool. The Court found it proper to treat the district court’s order as a final judgment since it declared that Evolusion had no claim it could pursue. Based on the claim construction in the Juggernaut case, the Court vacated and remanded the case against Supertool.
About this Author
Amol Parikh is an associate in the law firm of McDermott Will & Emery LLP and is based in the Firm’s Chicago office.  He focuses his practice on IP litigation, counseling and prosecution. Amol has been recognized as a 2011 Illinois Rising Star in Intellectual Property by Law & Politics.  Rising Stars are lawyers under the age of 40 that have been in practice for 10 years or less.  No more than 2.5 percent of the lawyers in Illinois are named as Rising Stars.
Amol has…
 
As a woman owned company, The National Law Review is a certified member of the Women's Business Enterprise National Council
You are responsible for reading, understanding and agreeing to the National Law Review’s (NLR’s) and the National Law Forum LLC’s  Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only. Any legal analysis, legislative updates or other content and links should not be construed as legal or professional advice or a substitute for such advice. No attorney-client or confidential relationship is formed by the transmission of information between you and the National Law Review website or any of the law firms, attorneys or other professionals or organizations who include content on the National Law Review website. If you require legal or professional advice, kindly contact an attorney or other suitable professional advisor.  
Some states have laws and ethical rules regarding solicitation and advertisement practices by attorneys and/or other professionals. The National Law Review is not a law firm nor is www.NatLawReview.com  intended to be  a referral service for attorneys and/or other professionals. The NLR does not wish, nor does it intend, to solicit the business of anyone or to refer anyone to an attorney or other professional.  NLR does not answer legal questions nor will we refer you to an attorney or other professional if you request such information from us. 
Under certain state laws the following statements may be required on this website and we have included them in order to be in full compliance with these rules. The choice of a lawyer or other professional is an important decision and should not be based solely upon advertisements. Attorney Advertising Notice: Prior results do not guarantee a similar outcome. Statement in compliance with Texas Rules of Professional Conduct. Unless otherwise noted, attorneys are not certified by the Texas Board of Legal Specialization, nor can NLR attest to the accuracy of any notation of Legal Specialization or other Professional Credentials.
The National Law Review – National Law Forum LLC 4700 Gilbert Ave. Suite 47 #230 Western Springs, IL 60558  Telephone  (708) 357-3317 or toll free (877) 357-3317.  If you would ike to contact us via email please click here.

source

Read Previous

February APC Convention Settled Case – Chieftain

Read Next

Conservative lawyer wrongly booted from Carter Page case, Del. high court says – Reuters

Leave a Reply

Your email address will not be published.