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Davies Innovations Inc. v. Sig Sauer Inc.

United States District Court, D. New Hampshire

August 29, 2017

Davies Innovations, Inc.
v.
SIG Sauer, Inc. and Sturm, Ruger & Company, Inc.

          ORDER

          LANDYA MCCAFFERTY UNITED STATES DISTRICT JUDGE

         Plaintiff Davies Innovations, Inc. brought separate patent infringement lawsuits against SIG Sauer, Inc. ("SIG") and Sturm, Ruger & Company, Inc. ("Ruger") in the United States District Court for the Southern District of Texas, Galveston Division. See Davies Innovations, Inc. v. SIG Sauer, Inc., No. 3:15-cv-00281 (S.D. Tex. filed Oct. 9, 2015); Davies Innovations, Inc. v. Sturm, Ruger & Company, Inc., No. 3:15-cv-00282 (S.D. Tex. filed Oct. 9, 2015). In both actions, plaintiff alleged infringement of the same patent, United States Patent No. 7, 827, 722 (the "'722 Patent"), which discloses a rifle.

         Defendants separately moved in their respective actions to transfer their cases to this court, and both motions were granted. Once transferred, the court consolidated the two cases for pre-trial purposes, including claim construction proceedings.

         The parties differ over the meaning of a number of terms as they appear in several claims of the '722 patent. The court received briefing and, on June 30, 2017, conducted a hearing on this issue in accordance with Markman v. Westview Instruments, Inc., 517 U.S. 370, 388 (1996). The parties used the hearing solely to present oral argument. Based on the parties' presentations and memoranda, the court interprets the disputed claim terms as summarized below.

         STANDARD OF REVIEW

         The meaning of language in a patent claim presents a question of law for the court to decide. Markman, 517 U.S. at 388. "[T]he words of a claim are generally given their ordinary and customary meaning, " i.e., "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc) (quotation marks omitted).

         In arriving at this meaning,

a claim construction analysis must begin and remain centered on the claim language itself, for that is the language the patentee has chosen to particularly point out and distinctly claim the subject matter which the patentee regards his invention. The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in light of the specification, of which they are a part.

Source Vagabond Sys. Ltd. v. Hydrapak, Inc., 753 F.3d 1291, 1299 (Fed. Cir. 2014) (citations, quotation marks, and bracketing by the court omitted).

         Yet "[w]hen consulting the specification to clarify the meaning of claim terms, courts must take care not to import limitations into the claims from the specification." Abbott Labs, v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (en banc). "It is therefore important not to confuse exemplars or preferred embodiments in the specification that serve to teach and enable the invention with limitations that define the outer boundaries of claim scope." Intervet Inc. v. Merial Ltd., 617 F.3d 1282, 1287 (Fed. Cir. 2010) (citing Phillips, 415 F.3d at 1323).

         "In addition to consulting the specification, ... a court should also consider the patent's prosecution history, if it is in evidence." Phillips, 415 F.3d at 1317 (quotation marks and citation omitted). The court examines the prosecution history "to discern the applicant's express acquiescence with or distinction of the prior art as further indication of the scope of the claims." Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1377 (Fed. Cir. 2005).

         Further, though "less significant than the intrinsic record" to claim construction, the court may also "rely on extrinsic evidence, which consists of all evidence external to the patent and prosecution history, including expert and inventor testimony, dictionaries, and learned treatises." Phillips, 415 F.3d at 1317 (quotation marks and citation omitted). Although "extrinsic evidence may be useful to the court, . . . it is unlikely to result in a reliable interpretation of patent claim scope unless considered in the context of the intrinsic evidence." Id. at 1319; see also Bell Atl. Network Servs., Inc. v. Covad Commc'ns Grp., Inc., 262 F.3d 1258, 1269 (Fed. Cir. 2001) ("extrinsic evidence may be used only to assist in the proper understanding of the disputed limitation; it may not be used to vary, contradict, expand, or limit the claim language from how it is defined, even by implication, in the specification or file history").

         BACKGROUND

         The '722 patent issued on November 9, 2010. Robert Davies, the inventor, was the President of Advance Device Design and RF Power Devices, Inc. After Mr. Davies passed away in October 2012, the '722 patent was assigned, first to Mr. Davies' friend, David Stanowski, and subsequently, on October 7, 2015, to Davies Innovations, Inc. ("Davies"), the plaintiff in this case. Two days after the latter assignment, Davies filed the instant lawsuits against SIG and Ruger, alleging that both defendants infringe the '722 patent by making, using, offering to sell, and selling rifles covered by the patent's claims. See 35 U.S.C. § 271(a).

         The '722 patent generally discloses a gas-piston driven rifle having an upper receiver, a bolt carrier, a barrel, a handguard, and a gas-piston operating system that is at least partially removable through a plug in the front of a barrel coupling that serves to redirect gases from the discharge of the weapon to a piston assembly. The gases force the piston assembly rearward, causing a force to be exerted on the bolt carrier, which forces the bolt carrier rearward to eject the spent cartridge casing.

         The parties differ over the meaning of four terms as they appear in, among others, claim 1 of the '722 patent.[1] Claim 1, with the disputed claim terms underlined, provides:

1. A rifle having an upper receiver carrying a bolt carrier and a barrel attached to the upper receiver, the rifle further comprising:
an operating system extending forwardly along the barrel and terminating in a barrel coupling[2] including a piston assembly coupled to the barrel for receiving propelling gasses from the barrel, the piston assembly having a cylinder with an open forward end, a piston moveable between a retracted position and an extended position within the cylinder, and an end plug removably closing the open forward end of the cylinder to permit passage of the piston therethrough when the plug is removed.
a tubular handguard having a forward end, a rearward end, a central void extending between the forward end and the rearward end, and a channel extending therealong adjacent the central void, the tubular handguard received about the barrel with the channel providing clearance for the operating system and the forward end being open to permit access to the barrel coupling and end plug of the operating system; and a barrel nut coupling the barrel to the receiver, and the tubular handguard encircling the barrel is received about and coupled to the barrel nut.

         Doc. no. 1-1 at 22, Claim 1 (emphasis added).

         In addition, the parties differ over the meaning of one term as it appears in claim 8 of the '722 patent. Claim 8, in relevant part and with the disputed claim term underlined, discloses a rifle comprising:

an operating system extending along the barrel and terminating in a barrel coupling including a piston assembly coupled to the barrel for receiving propelling gasses from the barrel, the piston assembly having a cylinder with an open forward end, a piston/pushrod assembly moveable between a retracted position and an extended position, and an end plug removably closing the open forward end of the cylinder to permit passage of the piston/pushrod assembly therethrough when the plug is removed;

Id. at 22, Claim 8 (emphasis added) .[3]

         DISCUSSION

         As noted, the parties differ over four terms as they appear in claim 1 and one term as it appears in claim 8 of the '722 patent. The court resolves those disputes as follows.

         I. Independent claim l [4]

         A. "a piston moveable between a retracted position and an extended position within the cylinder"

         Claim 1 of the '722 patent recites a piston assembly having a cylinder with "a piston moveable between a retracted position and an extended position within the cylinder." Davies argues that construction of this term is unnecessary and that it should be given its plain and ordinary meaning. SIG disagrees, arguing that the term means "a piston that laterally moves between a forward (retracted) position and a rearward (extended) position, in each of which positions the piston is borne by and resides directly inside the cylinder." Ruger "agrees with and adopts the positions and arguments set forth in SIG's Opening Claim Construction Brief."[5] Doc. no. 76 at 9.

         SIG contends that its proposed construction helps to clarify two elements of this disputed claim term-that the piston is located within the cylinder and that the piston moves from a forward to rearward position therein. The court addresses each element separately.

         1. Location of the Piston SIG

         asserts that the intrinsic evidence shows that the piston must be housed within the cylinder without anything in between the piston and the cylinder. It therefore proposes a construction of this term as requiring that the piston is "borne by and resides directly inside the cylinder."

         In support of its position, SIG cites several pieces of intrinsic evidence. First, it relies on other parts of the '722 patent. SIG refers to the following language from the specification: "Piston 42 is carried within cylinder 40 and includes a hollow piston head 45 with self cleaning grooves 46 formed in piston head 45, to prevent build-up of powder residue such as carbon, engaging an inner surface of cylinder 40." Doc. no. 1-1 at Col. 4, 11. 55-59 (emphasis added). In addition, SIG refers to Figures 3 and 4 in the '722 patent, noting that in both "there is no interstitial vessel or other tube between the piston 42 and the cylinder 40." Doc. no. 77 at 11. Partial views of Figures 3 and 4 are shown below.

         (Image Omitted)

         Doc. no. 1-1 at 4, Fig. 3.

         (Image Omitted)

Id. at 5, Fig. 4.

         The portions of the '722 patent upon which SIG relies do not support limiting the claim in the way SIG proposes. For example, SIG cites language in the specification under the heading "DETAILED DESCRIPTION OF A PREFERRED EMBODIMENT." Doc. no. 1-1 at Col. 4, 11. 8-9. Similarly, Figures 3 and 4 in the '722 patent upon which SIG relies represent a "preferred embodiment" of the invention. Id. at Col. 3, 11. 21-25 (providing "detailed description of a preferred embodiment" as set out in the drawings). While this evidence may suggest that the piston is "borne by and resides directly inside the cylinder, " claims are not limited by preferred embodiments absent a clear expression of intent to limit the claims' scope to those embodiments. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1342 (Fed. Cir. 2010); see also Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1267 (Fed. Cir. 2015) ("We find nothing in the '374 patent's preferred embodiments or the remainder of the specification that evinces a clear intention to restrict the invention's communications to those initiated by the server."). SIG points to no clear expression of the inventor's intent to limit the claims' scope to the preferred embodiment and, therefore, the cited portions of the '722 patent do not support SIG's proposed construction.

         SIG disagrees that Figures 3 and 4 represent only a preferred embodiment. It notes that the specification describes Figure 3 as representing a drawing of a portion of the rifle "in accordance with the present invention." Doc. no. 1-1 at Col. 3, 11. 31-32. SIG argues that such language shows that Figure 3 imposes a limitation on the invention. Although SIG is correct that use of the phrase "present invention" can limit the scope of the entire invention in certain circumstances, see Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007), the use of that phrase is not always so limiting, see, e.g., Voda v. Cordis Corp., 536 F.3d 1311, 1320-21 (Fed. Cir. 2008) (noting that although parts of the specification referred to a certain embodiment as the "present invention, " the specification did not uniformly refer to the invention as being so limited, and the prosecution history did not reveal such a limitation). That this language is not so limiting here is supported by other language in the specification which provides that "[v]arious changes and modifications to the embodiments herein chosen for purposes of illustration will readily occur to those skilled in the art." Doc. no. 1-1 at Col. 10, 11. 61-63; see True Fitness Tech., Inc. v. Precor Inc., 203 F.Supp.2d 1078, 1081 (E.D. Mo. 2001) (noting that similar "boilerplate" language weighs against construing a feature of a patent's drawings as a limitation). Therefore, the specification and Figures 3 and 4 do not mandate adoption of SIG's construction.

         Second, SIG relies on a May 30, 2010 presentation Mr. Davies made to the Special Operations Peculiar Modification Conference entitled "Chronology Advanced Device Design, Inc. Rifle Development" (the "presentation"), and which he showed to the patent office ("PTO") in an effort to overcome prior art during prosecution of the '722 patent.[6] In his submission to the PTO, the inventor referred to the photographs in the presentation as those "of my invention as described and claimed in the above identified application" for the '722 patent. Doc. no. 77-10 at 2. SIG asserts that the photographs in the presentation, depicted below, show the operating system with a piston within the cylinder without anything between the piston and the cylinder.

         (Image Omitted)

         Doc. no. 77-4 at 13.

         (Image Omitted)

Id. at 14.

         Although pictures of the inventor's commercial embodiment in the presentation may be compatible with SIG's construction, " 'infringement is determined on the basis of the claims, not on the basis of a comparison with the patentee's commercial embodiment of the claimed invention.'" Int'l Visual Corp. v. Crown Metal Mfg. Co., Inc., 991 F.2d 768, 772 (Fed. Cir. 1993) (quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1578 (Fed. Cir. 1984) (alterations omitted)). Therefore, the court will not impose a limitation based on the pictures of the inventor's commercial embodiment of the '722 patent.

         The language of the claim requires that the piston be moveable "within the cylinder." Therefore, as Davies observes, that phrase would be sufficiently clear to a person of ordinary skill in the art as to need no additional clarification.

         2. Movement of the piston SIG

         argues that the words "retracted position" and "extended position" require clarification because "the intuitive perception would be that something being 'retracted' would become closer to the shooter, and 'extended' would characterize being something farther away from the shooter." Doc. no. 77 at 10. SIG notes that in the '722 patent, "the intuitive proximity of 'retracted' vs. 'extended' position is reversed" and, therefore, argues that the claim language should be interpreted to clarify the location of those positions. Id. In addition, SIG seeks to add the word "laterally" to describe the movement of the piston.

         As the parties concede, they do not disagree over the piston's movement as it is set forth in this claim term. They agree that the piston is moveable from one end of the cylinder to the other, and the piston moves side-to-side within the cylinder. SIG argues that its proposed construction is useful to a lay jury, while Davies contends that the existing language is sufficiently clear that it needs no clarification.

         The court agrees that clarification of the piston's movement in this claim term may be useful to the jury.[7] SIG's proposed construction, however, imposes additional limitations on the claim term, none of which is supported by the intrinsic evidence. For example, although the parties agree that the piston moves horizontally within the cylinder (rather than vertically), that term "lateral" is absent from the '722 patent, and there is nothing in the intrinsic evidence to show that the piston must move in that fashion. In addition, the limitation is that the piston must be moveable-that is, able to move- between two positions within the cylinder, not that it must move between those positions, as SIG proposes.

         As the parties agree, the words "retracted" and "extended" as used in this claim term are used to denote opposite ends of the cylinder. Therefore, the court construes the phrase "a piston moveable between a retracted position and an extended position" to mean "a piston ...


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