United States: Summary Judgment Shot Down In Rifle Patent Lawsuit

In a recent patent case concerning hunting rifles, Judge McCafferty in the District of New Hampshire granted the defendant's motion for summary judgment with respect to literal infringement of a patent on a rifle handguard, but denied the motion with respect to infringement under the doctrine of equivalents. The case arose when the plaintiff, Davies Innovations, Inc., the owner of a U.S. patent that discloses a particular type of rifle handguard, brought separate patent infringement lawsuits against defendants SIG Sauer, Inc. and Sturm, Ruger & Company, Inc. ("Ruger"). Ruger moved for summary judgment of non-infringement.

Each claim of the patent-in-suit required a rifle having a handguard with an open forward end to permit access to certain components of the rifle's operating system. Ruger moved for summary judgment, arguing that it does not infringe because its rifles do not have a handguard with, "the forward end being open to permit access to the barrel coupling and end-plug of the operating system," as recited in the claims of the asserted patent.

The court used a two-part inquiry to evaluate the non-infringement summary judgment motion, first construing the scope and meaning of the pertinent patent claims, and then comparing the construed claims to the accused product. Under the claim construction analysis, the court construed the "open to permit access" limitation of the claim language to mean a tubular handguard with, "the forward end being open for the purpose of permitting access to the barrel coupling and end plug of the operating system." Specifically, the court disagreed with Davies' assertion that the claimed phrase "to permit access" has the plain and ordinary meaning of "not preventing access" because this would require a finding that any rifle with an open-fronted handguard could infringe the asserted patent, regardless of how the user accessed the operating system components.

Instead, based on the prosecution history of the patent and the grammatical structure of the claim language itself, the court reasoned that permitting access to the operating system's components is the reason for the handguard's forward end being open. Thus, according to the court, the phrase "to permit access" should be construed to mean, "for the purpose of permitting access."

Under the infringement analysis, the court found that Ruger's rifles do not literally infringe the asserted patent. The court found that there is no literal infringement because, when assembled, the handguard of the forward end of Ruger's rifles is obstructed by and attached to the barrel coupling and end plug. Thus, when assembled, the handguard of the forward end of a Ruger rifle is not "open to permit access" to the relevant components of the operating system. The court thus granted Ruger's motion for summary judgment of no literal infringement.

However, with respect to infringement under the doctrine of equivalents, the court denied Ruger's motion for summary judgment. Under the doctrine of equivalents, a product that does not literally infringe the express terms of a patent claim may be found to infringe if there is "equivalence" between the elements of the accused product and the claimed elements of the patented invention. However, there are certain limitations to the doctrine of equivalents. Ruger invoked two of them: prosecution history estoppel and claim vitiation.

Prosecution history estoppel can bar a patentee from asserting equivalents if the scope of the claims has been narrowed by amendment during prosecution. The narrowing amendment may be presumed to be a general disclaimer of the territory between the original claim and the amended claim. Here, the application that matured into the patent was a divisional patent application including claims as originally filed directed at the composition of a rifle's operating system. None of the original claims even mentioned a handguard. Davies later submitted a pre-examination amendment canceling all the original claims and replacing them with a set of new claims that eventually matured into the patent.

Ruger argued that the claim amendment prevented Davies from challenging as infringing any equivalent to a handguard. According to the court, prosecution history estoppel does not apply unless the patentee makes an amendment that narrows the patent's scope. Here, Davies did not amend the prior claims to add the handguard limitation, thereby narrowing the claim scope. Instead, Davies canceled the prior claims and submitted a new set of claims directed to a distinct invention. Therefore, according to the court, Ruger did not show that prosecution history estoppel bars a claim of infringement under the doctrine of equivalents.

Under the vitiation doctrine, if a finding of infringement under the doctrine of equivalents would entirely vitiate a particular claim element, then there is no infringement under the doctrine of equivalents. Ruger argued that because its handguard could not be considered "open" under any claim construction, any finding of equivalence would vitiate the limitation in the patent-in suit requiring the handguard to have a forward end being "open to permit access."

The court found that even though the handguard in Ruger's rifles does not satisfy the claim construction of the "open to permit access" claim limitation, Ruger did not demonstrate that its rifles are "an entirely different structure" from that claimed. According to the court, although the forward end of the Ruger handguard is not "open" under the court's claim construction, the cut-out in the upper portion of the forward end of the handguard allows the user to access operating system components. In other words, the Ruger's handguard is designed to allow access to the operating system components by having them sit in a cut-out portion of the front end of the handguard. Thus, applying the doctrine of equivalents to the Ruger handguard does not read out the "open to permit access" limitation. As such, the court was not persuaded that claim vitiation applies to bar infringement under the doctrine of equivalents, and denied summary judgment of non-infringement with respect to the doctrine of equivalents.

The case is Davies Innovations, Inc. v. SIG Sauer, Inc., No. 16-cv-352-LM, pending in the U.S. District Court for the District of New Hampshire. A copy of the opinion can be found here.

Summary Judgment Shot Down In Rifle Patent Lawsuit

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions