Federal Circuit Reverses Rifle Patent Interpretation That Missed the Mark

Fitch, Even, Tabin & Flannery LLP

On January 14, in Evolusion Concepts, Inc. v. HOC Events, Inc. (consolidated with Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc.), the Federal Circuit emphasized that claim terms should be given their ordinary meaning absent a clear reason to do otherwise.

Evolusion is the owner of U.S. Patent No. 8,756,845, which relates to conversion of a semi-automatic rifle with a detachable magazine to a rifle one with a fixed magazine. The ’845 patent contains two independent apparatus claims, each reciting “a magazine catch bar” that is securely attached to a firearm and resting within a magazine side-locking recess. The patent also includes a third independent claim, directed to a method for converting a firearm with a detachable magazine into a firearm with a fixed magazine by (i) removing a factory installed magazine release button assembly by depressing the magazine release button to sufficient depth to permit “a factory installed magazine catch bar” to extend beyond the magazine well, rotating the factory installed magazine catch bar until it is unthreaded, and removing all parts of the factory installed magazine release button assembly, and then (ii) installing “a magazine catch bar” so that the magazine catch bar is resting within a magazine side-locking recess (emphasis added).

Evolusion initially asserted all three independent claims against Juggernaut, but subsequently withdrew assertion of the method claim. Both parties moved for summary judgment on the issue of infringement, agreeing that infringement depends entirely on construction of the phrase “magazine catch bar” in the apparatus claims. The district court concluded that “magazine catch bar” excludes a factory-installed (OEM) magazine catch bar, and on that basis granted summary judgment in favor of defendant Juggernaut.

On appeal, the Federal Circuit adopted a broader construction of the term “magazine catch bar” and accordingly reversed the district court’s summary judgment rulings. The court considered whether the meaning of “magazine catch bar” was narrowed by the recitation in the unasserted method claim of first “removing a factory installed magazine release button assembly” that includes “a factory installed magazine catch bar” and then “installing a magazine catch bar,” holding that removal of an assembly that includes a factory installed magazine catch bar does not preclude reuse of the same factory installed catch bar in place of the entire removed assembly. As a result, even if the term “magazine catch bar” is given the same meaning across all claims, there is no reason to exclude factory installed catch bars from the scope of the apparatus or method claims. The court pointed out that nothing in the method claim required “discarding” the factory installed catch bar or installing a “new” or “different” catch bar. The court also stated that use of the term “a” before “magazine catch bar” instead of antecedent-basis language such as “said” or “the” does not mean that the two magazine catch bars must be different, and that the ordinary meaning of “a magazine catch bar” can cover either the removed catch bar or a new catch bar.

The Federal Circuit also noted that nothing in the patent’s specification limits the meaning of “magazine catch bar” to exclude factory-installed versions. While the disclosed embodiments of the ’845 patent do not illustrate factory-installed/OEM catch bars, that is not enough to limit claims beyond their plain meaning. The district court had relied heavily on one sentence in the specification stating that “[t]he invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” The Federal Circuit found that this characterization of “the invention” is similar to the language of the method claim, and for the same reasons does not preclude re-installation of a factory-installed magazine catch bar after its removal.

In a separate case for infringement of the ’845 patent, defendant HOC Events failed to respond at all to Evolusion’s complaint. Nevertheless, the district court denied Evolusion’s motion for default judgment under F.R.Civ.P. 55(b) because HOC’s products require reusing the factory-installed magazine catch bar, citing its claim construction and summary judgment rulings in the case against Juggernaut. While noting that the district court’s denial of default judgment is not technically a final judgment or a judgment against Evolusion, the Federal Circuit vacated the order and remanded, holding that it has jurisdiction to review the order because it declares that Evolusion has no claim to pursue and resulted in termination of the case.

This case is one of many in which the Federal Circuit has construed claim language by looking to language in other claims and to the description of disclosed embodiments. However, the decision shows that a broad interpretation should generally be applied unless there is a clear and logical reason to apply a narrower reading.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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