Evolusion Concepts, Inc. v. HOC Events, Inc., DBA Supertool USA / Juggernaut
Docket No. 2021-1963 and 2021-1987 (https://cafc.uscourts.gov/opinions-orders/21-1963.OPINION.1-14-2022_1893196.pdf)
PROST, TARANTO, CHEN
January 14, 2021
Brief Summary: DC decisions reversed due to improper claim construction.
Summary: Evolusion appealed DC grant of summary judgment (SJ) of non-infringement to HOC (2021-1963). This opinion also addresses the appeal of the DC grant of SJ to Juggernaut on the same grounds (21-1987). Both decisions were based on the claim construction of Evolusion’s US 8,756,845 directed to firearm magazines in which the DC’s “key ruling was that the term ‘magazine catch bar’…excludes a factory-installed” (or “OEM”) version. The ‘845 patent includes three independent claims, claims 1 and 8 to “[a] firearm with a fixed magazine” and “device for converting a firearm”, respectively, including the magazine catch bar, and method claim 15 including removing a “factory installed magazine catch bar” and “installing a magazine catch bar”. During the DC proceedings against Juggernaut, Evolusion removed claim 15 from its allegations of infringement. The DC held that Juggernaut does not infringe literally or under the doctrine of equivalents (DOE). The FC panel wrote that the DC “based its determination 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’”, “[b]ecause the OEM magazine catch bar is one of the components removed to install ‘the invention,’ the court determined that the ‘magazine catch bar’ of the invention cannot be an OEM magazine catch bar”, and “reasoned that the language of unasserted claim 15 supports its construction” (“” the court concluded that the magazine catch bar that is installed must be ‘separate and distinct from the factory-installed magazine catch bar’; otherwise, ‘factory-installed’ would be superfluous”). The DC also ruled no infringement under the DOE because “by disclosing but not claiming a factory-installed magazine catch bar, Evolusion had dedicated a factory-installed magazine catch bar to the public” and “because the terms ‘magazine catch bar’ and ‘factory-installed magazine catch bar’ are separately identified in the ’845 patent, the magazine catch bar of the claims cannot be an insubstantial alteration of a factory-installed magazine catch bar.” As the DC relied on intrinsic evidence only, the FC panel reviewed the decision de novo (Teva, US 2015). The FC panel agreed with Juggernaut “that the meaning of the term in claims 1 and 8 could well be informed by a meaning of the term made sufficiently clear in claim 15” (Phillips, FC 2005). However, it concluded that here claim 15 “involves removing and installing assemblies of parts—not only magazine catch bars” and “[t]he ordinary meaning of the claim language allows the factory-installed magazine catch bar to be removed as part of the initial assembly removal and reused as part of the assembly installed in a later step” (“would amount to reading additional limitations into claim 15 not required by its language”). The FC panel also concluded that “[t]he specification supports the ordinary-meaning interpretation of ‘magazine catch bar’” as it “nowhere limits the scope…to exclude factory-installed ones” (Phillips). It therefore reversed, vacated and remanded both decisions.