Magazine Reload: Claim Construction Error Requires Reversal and Remand
The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment ruling based on a claim construction error because nothing in the claims or specification of the asserted patent supported the district court’s overly narrow interpretation of the disputed claim term. Evolusion Concepts, Inc. v. HOC Events, Inc. d/b/a Supertool USA, Case No. 21-1963 (Fed. Cir. Jan. 14, 2021) (Prost, Taranto, Chen, JJ.); Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc., Case No. 21-1987 (Fed. Cir. Jan. 14, 2021) (Fed. Cir. Jan. 14, 2021) (Prost, Taranto, Chen, JJ.).
Evolusion owns a patent directed to a device and method for converting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. A detachable magazine allows a user to fire the weapon until the magazine is depleted, then release the magazine, insert a new magazine and resume firing. In contrast, a fixed magazine can be removed and replaced only by disassembling certain nonmagazine parts of the firearm, which slows the rate of fire. The specification states that firearms with detachable magazines are likely to face increased legal restrictions, noting that bills recently introduced in US Congress would have banned semi-automatic weapons with detachable magazines. The claims of the patents recite, among other limitations, a “magazine catch bar.”
Evolusion sued Juggernaut for infringement. Juggernaut asserted invalidity and noninfringement. The parties cross-moved for summary judgment relating to infringement of the device claims, agreeing that the question of infringement depended entirely on whether the claimed “magazine catch bar” included a factory-installed (OEM) magazine catch bar. The district court concluded that the term “magazine catch bar,” as used in the claims and specification, excluded an OEM magazine catch bar. The court’s conclusion was based primarily on the sentence in the specification that states: “The invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” The court reasoned that the “magazine catch bar” of the invention could not be an OEM magazine catch bar since the OEM magazine was one of the components removed to install the invention. Based on the construction, the court concluded that Juggernaut did not literally infringe the patent. The court also found that Juggernaut could not infringe under the doctrine of equivalence because Evolusion had dedicated a factory-installed magazine catch bar to the public by disclosing, but not claiming, this embodiment.
Evolusion also sued Supertool for infringement. When Supertool failed to respond to the complaint, the district court clerk entered a default under Rule 55(a) of the Federal Rules of Civil Procedure. With the requests for relief not yet adjudicated, Evolusion moved for a “default judgment” under Rule 55(b), but the court denied the motion. In its denial, the court, citing its ruling in the Juggernaut case, stated that Evolusion failed to state a viable claim for infringement against Supertool because its products also required reusing the factory-installed magazine catch bar. Evolusion appealed the Juggernaut and Supertool rulings.
The Federal Circuit reversed the noninfringement ruling based on claim construction error. The Court explained that nothing in the language of the device claims limited the scope of the generic term “magazine catch bar” to exclude one that was factory installed. The Court rejected Juggernaut’s argument that a method claim’s recitation of the steps of removing all parts of the factory-installed magazine release button assembly required that the “magazine catch bar” not be the factory-installed magazine catch bar, explaining that nothing in the method claim required “discarding” the OEM catch bar or installing a “new” or “different” catch bar. Thus, the device claims were broad enough to encompass a magazine catch bar that could either be the removed catch bar or a new or different catch bar.
The Federal Circuit found that the specification also supported this ordinary meaning, explaining that nothing in the specification limited the scope of a “magazine catch bar” to exclude factory-installed catch bars as long as it achieved the fixed-magazine goal. The Court also concluded that it made no difference that the disclosed embodiments did not illustrate OEM magazine catch bars, explaining that nothing in the specification suggested that factory (or OEM) origin of a catch bar disqualifies it from being part of the invention if, as a structural matter, it is a magazine catch bar under the ordinary meaning. The Court further rejected the district court’s reliance on the sentence from the specification that 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 nothing in the specification precluded re-installation of a factory-installed magazine catch bar.
In light of the intrinsic evidence, the Federal Circuit construed the term “magazine catch bar” according to its ordinary meaning, which includes a factory-installed magazine catch bar. The Court concluded that the construction not only required reversal of the grant of summary judgment to Juggernaut, but also required reversal of the denial of summary judgment of infringement to Evolusion as to the device claims, because the parties agreed that direct infringement of those claims was established if the term “magazine catch bar” was construed to include a factory-installed magazine catch bar.
The Federal Circuit also vacated the district court’s denial of default judgment as to Supertool. The Court found it proper to treat the district court’s order as a final judgment since it declared that Evolusion had no claim it could pursue. Based on the claim construction in the Juggernaut case, the Court vacated and remanded the case against Supertool.