United States District Court, D. New Hampshire
Davies Innovations, Inc.
SIG Sauer, Inc. and Sturm, Ruger & Company, Inc.
MCCAFFERTY UNITED STATES DISTRICT JUDGE
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.
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.
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.
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
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).
"[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).
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).
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").
'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).
'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.
parties differ over the meaning of four terms as they appear
in, among others, claim 1 of the '722
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
an operating system extending forwardly 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 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.
no. 1-1 at 22, Claim 1 (emphasis added).
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) .
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.
Independent claim l 
"a piston moveable between a retracted position and
an extended position within the cylinder"
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." Doc. no. 76 at 9.
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.
Location of the Piston SIG
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."
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.
no. 1-1 at 4, Fig. 3.
Id. at 5, Fig. 4.
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.
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.
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
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
no. 77-4 at 13.
Id. at 14.
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.
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
Movement of the piston SIG
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
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
court agrees that clarification of the piston's movement
in this claim term may be useful to the jury. 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.
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 ...