“Nothing in the language of claims 1 and 8 limits the scope of the generic term ‘magazine catch bar’ to exclude one that was factory installed.” – CAFC
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday ruled that a California district court erred in its claim construction relating to Evolusion Concepts, Inc.’s patent for a method of converting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. The CAFC reversed the court’s grant of summary judgment of non-infringement for Juggernaut Tactical, Inc., reversed a denial of summary judgment of direct infringement, vacated the award of attorneys’ fees and remanded for further proceedings.
Evolusion Concepts’ U.S. Patent No. 8,756,845 is titled, “Method and Device for Converting Firearm with Detachable Magazine to a Firearm with Fixed Magazine.” Evolusion sued Juggernaut in the U.S. District Court for the Central District of California, alleging infringement of claims 1–3 and 8–10 of the patent. The company sought summary judgment of direct infringement as well as induced and contributory infringement of those claims. Juggernaut sought summary judgment of non-infringement, and the construction of the term “magazine catch bar” became necessary. Juggernaut’s alleged infringing product, its “Hellfighter Mod Kits,” retained the factory-installed magazine catch bar in the conversion of a firearm to one with a fixed magazine. The parties thus agreed that “whether Juggernaut infringes independent claims 1 and 8 ‘depends entirely on’ whether the claim phrase “magazine catch bar” includes a factory-installed (OEM) magazine catch bar.”
In the district court’s reading of the ‘845 patent specification, the following sentence meant that the “magazine catch bar” of the invention cannot be an OEM magazine catch bar:
“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 “the OEM magazine catch bar is one of the components removed to install ‘the invention,’ the court determined that the ‘magazine catch bar’ of the invention cannot be an OEM magazine catch bar,” explained the CAFC.
The district court added that a separate, unasserted claim (claim 15) further supported that construction because it “requires removing ‘the factory installed magazine catch bar’ and then installing ‘a magazine catch bar,’” meaning that “the magazine catch bar that is installed must be ‘separate and distinct from the factory-installed magazine catch bar’; otherwise, ‘factory-installed’ would be superfluous.”
The CAFC disagreed, holding that “[n]othing in the language of claims 1 and 8 limits the scope of the generic term ‘magazine catch bar’ to exclude one that was factory installed—specifically, as Juggernaut asserts, factory installed as part of an original firearm with a detachable magazine.” The court continued:
An instruction that identifies the removed assembly as including a factory-installed magazine catch bar, which focuses the process on conversion of what came from a factory, does not imply any preclusion of reuse of the same bar as one part of the assembly being installed in place of the removed assembly.
Thus, the CAFC interpreted the term “magazine catch bar” according to its ordinary meaning, which would include a factory-installed catch-bar that could be removed and reused in the later step of the claim. While the court said that Juggernaut was correct in its assertion that the meaning of the term in claims 1 and 8 could be informed by a meaning of the term made sufficiently clear in claim 15, it was “incorrect that the use of ‘magazine catch bar’ in claim 15 narrows the meaning of the term to support the urged exclusion of factory-installed magazine catch bars.
The parties agreed that direct infringement of independent claims 1 and 8 would be established if the term “magazine catch bar” is construed to include a factory-installed magazine catch bar, so the CAFC reversed the denial of summary judgment of infringement for Evolusion. The court instructed that the dependent claims be reconsidered on remand.
A separate appeal brought by Evolusion against HOC Events, Inc., dba Supertool USA, alleging infringement of both product and method claims of the ’845 patent, was also vacated and remanded under the same reasoning set forth in the case above.