Four Cannons of Construction in U.S. Patent Infringement: CAFC Reverses Lower Court in Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc
In Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc*., the U.S. Federal Circuit Court of Appeals maneuvered through a thicket of patent claim construction cannons to overturn an off-target summary judgement ruling of ‘no infringement’ of the claims of U.S. Patent 8,756,845.
The invention in the ‘845 Patent was a response to the introduction of Senate Bill S.150 – Assault Weapons Ban of 2013 which, if passed, would have banned assault rifles with removable magazines, rendering previously permissible firearms illegal. The invention converts a firearm (in particular, a semi-automatic rifle) originally made with a detachable magazine, to a firearm having a fixed magazine, with claims to a conversion process, to a device to use for the process, and to converted firearms. S.150 never became law, but the Evolusion Concepts, Inc. obtained the ‘845 Patent and targeted Juggernaut Tactical, Inc., which was selling conversion kits in competition with the patent holder’s AR Maglock conversion device.
According to the ‘845 Patent, a firearm converted for compliance under S.150 has a magazine “catch bar” securely attached to the firearm in a way which prevents removal of a magazine unless the firearm is partially disassembled.
Juggernaut’s solution for the S.150 problem included making use of a magazine catch bar that was part of a firearm originally built to operate with a detachable magazine (the “OEM catch bar”). When Evolusion sued for infringement, Juggernaut convinced the trial court that the ‘845 Patent did not read on a firearm having an OEM catch bar. Juggernaut advanced three cannons of patent claim interpretation to support its arguments:
1. When a part of an invention is mentioned more than once in a patent claim, it is first referred to as “a” structure, and later, as “the” structure or “said” structure; otherwise, the second reference could refer to a different structure.
2. A term used in a patent claim should have the same meaning in all the claims it appears in.
3. A patent claim is to be interpreted in light of the specification it relates to.
Juggernaut cited the first cannon in to reference to the independent method claim (claim 15 of the ‘845 Patent), which called out removing “the” factory-installed magazine catch bar (i.e., the OEM catch bar), and then installing “a” magazine catch bar to the firearm. From this, Juggernaut argued that the installed “a” catch bar was different from “the” OEM catch bar. Claim 15 was not asserted against Juggernaut and the asserted claims referred only to “a” catch bar. However, Juggernaut argued that under the second cannon, the requirement of claim 15 that “a” catch bar be different from “the” removed OEM catch bar should apply to the asserted claims, and since Juggernaut’s solution employed the OEM catch bar, they did not infringe. Juggernaut emphasized that the patent described removal of a factory-installed bar but never described use of “said” bar as part of the invention, citing the third cannon of claim construction. These arguments won Juggernaut a summary judgment of non-infringement which the Federal Circuit Court of Appeals reviewed de novo.
On appeal, Evolusion had to admit that for the third cannon none of the examples in the patent showed the use of an OEM catch bar as ‘a’ catch bar used in the method or converted device. However, they defended their position, saying that the patent did not explicitly say that the catch bar used for the invention could not be an OEM catch bar. Evolusion also fired back with a fourth cannon of claim interpretation:
4. Limitations seen in the examples of an invention in patent specification should not ordinarily be applied to the invention as claimed.
This final push won over the Appeals Court, which concluded that the claims and specification did not support Juggernaut’s assertion the ‘845 Patent could not be infringed through the use of an OEM catch bar. Having found that the lower court missed the mark on four cannons of claim construction, the Federal Circuit reversed the summary judgment ruling and remanded for a new trial.
Hopefully, this summary of the Evolusion case highlights the fact that patent infringement is not an ordinary battlefield and that litigants need to retain specialists who are knowledgeable about the patent rules of engagement in order to strategize their battles successfully.
*Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc., Fed. Cir. No. 2021-1987 (published with Evolusion Concepts, Inc. v. HOC Events, Fed. Cir. No. 21-1963) (2022) https://cafc.uscourts.gov/opinions-orders/21-1963.OPINION.1-14-2022_1893196.pdf
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