United States: Judge Young Affirms Interference Decision By Board Of Patent Appeals And Interferences In Patent Dispute Concerning Hand Guard Rails For Firearms

Stephen P. Troy, Jr. v. Samson Mfg. Corp., C.A. No. 11-10384, 2013 WL 1807013 (D. Mass. Apr. 30, 2013) (Young, D.J.) [Interference; Priority of Invention]

Stephen P. Troy, Jr. ("Troy") sought review of a decision of the Board of Patent Appeals and Interferences of the United States Patent and Trademark Office ("PTO") in Patent Interference No. 105,698. The interference was a dispute over priority between U.S. Patent No. 7,216,451 ("the '451 patent") filed by Troy and U.S. Patent Application No. 11,326,665 ("the '665 application") filed by Samson Manufacturing Corporation ("Samson"). The Court (Young, D.J.) affirmed the Board's decision.

The '665 application and the '451 patent relate to a modular handguard rail for a firearm. During the interference, Troy was declared the "junior party." The Board also determined that Samson's earliest constructive-reduction-to-practice date was January 18, 2005 ("the Critical Date").

During the Board proceedings, Troy failed to show actual reduction to practice of an embodiment of the invention prior to the Critical Date. Troy also failed to show earlier conception of the invention and, thus, could not prove inurement or derivation. The Board held that Troy failed to establish priority of the '451 patent over the '651 application. As a result, Troy filed a civil action under 35 U.S.C. §146 requesting that the District Court review the Board's decision on priority.

Troy sought to introduce six affidavits as new evidence to address evidentiary gaps in the record before the Board. Citing Federal Circuit and Supreme Court precedent, the Court stated that it would consider newly proffered evidence not available at the time of the Board proceedings, but would not consider new evidence related to issues not before the Board. The District Court reviewed the Board's conclusions of law de novo and reviewed underlying factual determinations for clear error.

Burden of Proof

Troy argued that the Board misplaced the burden of proof for priority and that Samson should have been deemed the junior party. Troy claimed that the '665 application was filed using confidential drawings and images of the invention that belonged to Troy. Troy also argued that Samson should have been denied senior party status because of inequitable conduct. Troy contended that this was not a new issue because he challenged the priority determination by seeking leave to file a motion for judgment of inequitable conduct, which the Board denied.

The Court found that it was not clear that the Board had the opportunity to address this issue during the interference, and Troy failed to demonstrate why the Court should exercise its discretion and consider a new issue. The Court refused to speculate as to the content of the alleged inequitable conduct motion because it was not corroborated. The Court also found that Troy failed to articulate where, in the record, he presented arguments relating to the inequitable conduct.

Actual Reduction to Practice

Troy bore the burden of establishing priority of invention in the District Court by showing an actual reduction to practice of the invention prior to Samson's Critical Date. In order to establish an actual reduction to practice, Troy needed to demonstrate that (1) he constructed an embodiment or performed a process to meet every element of the claim and (2) the embodiment or process operated for its intended purpose.

Troy claimed that an actual reduction to practice occurred between January and February 2004 and attempted to introduce a new affidavit to supplement prior testimony submitted to the Board. The Court disregarded this evidence and stated that, without adequate corroboration, the new testimony remained insufficient to prove an actual reduction to practice.

Troy further attempted to rely on various photographs, invoices, and testimony in support of an actual reduction to practice. For example, Troy relied on photographs of the Troy Rail. However, the photographs did not include the five elements contained in the claim. Additionally, the photographs were undated and thus insufficient to corroborate Troy's testimony. Troy also attempted to introduce an invoice dated February 2, 2004 for orders of the Troy Rail taken during a trade show, but the invoice merely listed orders without describing specific components. Finally, Troy sought to introduce an affidavit of a manager of a weapons and accessories review website and a deposition of a draftsperson who prepared drawings for Troy's weapons manufacturing firm. Because the testimony concerned events that occurred after the latest reduction-to-practice date Troy claimed in the interference, the Court found that Troy was precluded from raising these issues. Had Troy desired to claim a reduction-to-practice date after February 2004, he should have done so during the interference proceeding.


Because Troy failed to establish an actual reduction to practice, he argued that he was entitled to judgment on the basis of inurement and derivation. "Inurement involves a claim by an inventor that, as a matter of law, the acts of another person should accrue to the benefit of the inventor." As a result, for inurement, Troy was required to show, among other things, that Samson was working, either implicitly or explicitly, on his behalf. To show derivation, Troy must show communication to Samson that would have enabled Samson to construct and successfully operate the invention. Both of Troy's inurement and derivation theories required him to establish conception. Troy failed to do so.

As explained by the Court, Troy needed to prove possession of every feature in the claim by a preponderance of the evidence. Troy attempted to rely on undated drawings, solid model images, and the purchase of extrusion die necessary for manufacturing his design. However, the Court found that this evidence was uncorroborated and did not demonstrate all elements of the claim.

Originally published October 8, 2013.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.