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 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
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.

Disclaimer

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.

Registration

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.

Cookies

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.

Links

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.

Mail-A-Friend

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.

Security

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.