Davis Innovations, Inc. v. SIG Sauer, Inc., et al.

2017 DNH 028

• Court: District Court, D. New Hampshire
• Decided: February 15, 2017
• Docket: 16-cv-352-LM
• Status: Published

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Davies Innovations, Inc.

v. Civil No. 16-cv-352-LM Opinion No. 2017 DNH 028 SIG Sauer, Inc. and Sturm, Ruger & Company, Inc.

O R D E R

Plaintiff Davies Innovations, Inc. brought separate patent

infringement lawsuits against SIG Sauer, Inc. (“SIG Sauer”) 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.

Ruger moves for summary judgment of noninfringement (doc.

no. 49), asserting that the ‘722 patent requires that the rifle’s handguard have an “open” forward end “to permit access”

to certain components of the rifle’s operating system. Ruger

asserts that its rifles that allegedly infringe the ‘722 patent

(the “accused rifles”) lack this feature. Plaintiff objects,

arguing that summary judgment is inappropriate.1

Background

The ‘722 patent issued on November 9, 2010. The patent was

issued to Robert Davies, who 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 assignment, Davies filed the

instant lawsuits against SIG Sauer and Ruger, alleging that both

defendants infringe the ‘722 patent by 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

1 Ruger moved for summary judgment before the court approved the parties’ proposed discovery plan. At the scheduling conference, the parties agreed that Ruger’s motion would, if granted, entirely dispose of the claims against Ruger. The court agreed to entertain Ruger’s motion at this early stage of the litigation and to issue an expedited ruling thereon.

2 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 dispute in this summary judgment motion centers on the

handguard. Every claim of the ‘722 patent requires that the

rifle have a handguard with an open forward end to permit access

to certain components of the rifle’s operating system.2

Specifically, Claim 1 of the ‘722 patent 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 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

2 The parties agree that the purpose of this requirement is to allow the user to perform various maintenance tasks, such as modifying the gas intake or cleaning the operating system components without disassembling the handguard.

3 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). The ‘722 patent

shows a view of the tubular handguard surrounding the barrel

with the forward end being open to permit access to components

of the operating system in Figure 9. Figure 9 is reproduced

below with a graphic (rectangle) added by the court to identify

the open forward end of the handguard:

Doc. no. 1-1 at 7, Fig. 9.3

3 The end plug itself can be seen in Figure 9, immediately above the barrel and extending past the handguard.

4 Ruger moves for summary judgment, arguing that it does not

infringe the ‘722 patent because its accused rifles do not have

a handguard with “the forward end being open to permit access to

the barrel coupling and end plug of the operating system.”4

Davies disagrees with that argument. Because the construction

of the claim is relevant to whether certain of SIG Sauer’s

rifles are covered by the patent’s claims, the court allowed SIG

Sauer to brief the claim construction issue, and allowed Davies

to respond to SIG Sauer’s brief. The court held a hearing on

Ruger’s motion on December 2, 2016, during which Davies, Ruger,

and SIG Sauer presented argument and/or evidence.

Standard of Review

“Evaluation of summary judgment of noninfringement is a

two-part inquiry: first, a court construes the scope and meaning

of the asserted patent claims, and then compares the construed

claims to the accused product.” Medgraph, Inc. v. Medtronic,

Inc., 843 F.3d 942, 949 (Fed. Cir. 2016); see also Markman v.

Westview Instruments, Inc., 517 U.S. 370, 384-85 (1996). The

4 Two additional claims contain identical language but describe access to other components of the rifle’s operating system. See doc. no. 1-1 at 22, Claim 5 (forward end of the handguard being open to permit access to the piston assembly); id. at 22, Claim 8 (forward end of the handguard being open to permit access to the barrel coupling). For simplicity, the court references only Claim 1. Its construction of the claim language and summary judgment determinations apply equally to Claims 5 and 8.

5 construction of patent claims is a matter of law exclusively for

the court. UCB, Inc. v. Yeda Research and Dev. Co., Ltd., 837

F.3d 1256, 1259 (Fed. Cir. 2016). The determination of

infringement, however, is a question of fact. Bai v. L & L

Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998). As such, the

court should grant summary judgment of noninfringement only when

it determines that, after construction of the claim and drawing

all reasonable factual inferences in favor of the nonmovant, no

rational factfinder could find that the accused products

infringe the patent at issue. Medgraph, 843 F.3d at 949.

Discussion

I. Claim Construction

In construing the scope and meaning of patent claim terms,

a court looks first to the evidence intrinsic to the patent.

Astrazeneca AB v. Mut. Pharm. Co., Inc., 384 F.3d 1333, 1336-37

(Fed. Cir. 2004). The court begins by looking to “the claim

language itself to define the scope of the patented invention,”

and to the patent’s specification “[w]hen the claim language

itself lacks sufficient clarity to ascertain the scope of the

claims.” Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1377 (Fed.

Cir. 2005) (internal quotation marks and citation omitted).

Finally, the prosecution history, if in evidence, is examined

“to discern the applicant’s express acquiescence with or

6 distinction of the prior art as further indication of the scope

of the claims.” Id.

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 v.

AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (internal

quotation marks and citation omitted). “[E]vidence extrinsic to

the patent is useful insofar as it ‘can shed useful light on the

relevant art—and thus better allow a court to place itself in

the shoes of a person of ordinary skill in the art’ reading the

claims alongside the rest of the specification.” Astrazeneca,

384 F.3d at 1337 (quoting Vanderlande Indus. Nederland BV v.

Int’l Trade Comm’n, 366 F.3d 1311, 1318 (Fed. Cir. 2004)).

“Relying on extrinsic evidence to construe a claim is ‘proper

only when the claim language remains genuinely ambiguous after

consideration of the intrinsic evidence.’” Interactive Gift

Exp., Inc. v. Compuserve Inc., 256 F.3d 1323, 1332 (Fed. Cir.

2001) (quoting Bell & Howell Document Mgmt. Prods. Co. v. Altek

Sys., 132 F.3d 701, 706 (Fed. Cir. 1997)).

Both Ruger and Davies assert that formal claim construction

is unnecessary because the claim limitation of a tubular

7 handguard with “the forward end being open to permit access to

the barrel coupling and end plug of the operating system” uses

common terminology, and a construction of the limitation beyond

the plain and ordinary meaning of its terms would not aid the

jury.5 After considering the intrinsic evidence, the court

agrees that nothing in the intrinsic evidence suggests the

patentee intended those terms to carry some alternative

definition beyond their plain and ordinary meaning.

Claim construction, however, is still necessary. Although

the parties agree on the definition of the terms in the “open to

permit access” limitation, they dispute the scope of the

limitation itself. Therefore, the court must construe the claim

in order to settle the meaning of the disputed terms as they are

used in the ‘722 patent and the scope of the claims in which the

terms appear. See O2 Micro Int’l Ltd. v. Beyond Innovation

Tech. Co., Ltd., 521 F.3d 1351, 1362-63 (Fed. Cir. 2008)

(Markman requires district courts to resolve disputes between

the parties as to claim terms’ meaning or scope).

There are two components of the “open to permit access”

limitation that are relevant to Ruger’s motion: “being open” and

5 The court will refer to this claim limitation as the “‘open to permit access’ limitation.”

8 “to permit access.” The court addresses the components

separately.

A. “Being Open”

As discussed above, the parties agree that the phrase

“being open” invokes the plain and ordinary meaning of those

terms, and nothing in the intrinsic evidence suggests otherwise.

The parties, however, disagree as to whether the handguard on

the accused rifles is open under the plain and ordinary meaning

of that term. Therefore, the court will “clarify and . . .

explain what the patentee covered by the claims, for use in the

determination of infringement.” U.S. Surgical v. Ethicon, Inc.,

103 F.3d 1554, 1568 (Fed. Cir. 1997).

During the prosecution of the ‘722 patent, the examiner

twice rejected the patentee’s claim as obvious in light of the

combination of U.S. Patent No. 4,244,273 (“Langendorfer”) with

other patents. See 35 U.S.C. § 103. The Langendorfer patent

disclosed a rifle in which the forward end of the handguard

attached to the rifle’s front sight assembly. Mr. Davies, the

patentee, distinguished Langendorfer on the grounds that, unlike

the rifle disclosed in the ‘722 patent, the forward end of the

handguard on the Langendorfer rifle was not open: “Additionally,

Langendorfer does not teach an open end to the handguard. The

handguards are attached at the front sight assembly. There is

9 no provision, structure or possibility that the handguards of

Langendorfer can be open at the forward end.” Doc. no. 52-16 at

12. The patentee later noted that “[e]limination of the front

sight assembly to provide an open fronted handguard would render

it inoperable for its intended purpose.” Id. at 13.

The patentee’s invocation of the term “open” in this manner

indicates that the forward end of the handguard on the

Langendorfer rifle is not open because it is attached to another

portion of the rifle, i.e., the front sight assembly. It also

Langendorfer rifle would be open were it not attached to the

front sight assembly.

Thus, the prosecution history confirms that the plain and

ordinary meaning of the phrase “being open” is properly applied

to the “open to permit access” limitation. The court agrees

with the parties that the phrase “being open” is clear in the

context of the ‘722 patent without the need for elaboration. To

the extent the parties advance an argument suggesting that the

plain and ordinary meaning of the phrase “being open” is

inconsistent with the prosecution history discussed above, that

argument is without merit.

10 B. “To Permit Access”

The court next turns to the phrase “to permit access.”

Although the parties agree that the phrase should be given its

plain and ordinary meaning, they again dispute the scope of the

limitation.

Davies refers at various points in its objection to the

phrase “to permit access” as meaning “does not in any way

prevent access,” doc. no. 52-1 at 15, and “without any portion

of the handguard preventing access,” id. at 16. Thus, Davies

appears to assert that the phrase “to permit access” has the

plain and ordinary meaning of “not preventing access.”

The court disagrees with that assertion. First, that

meaning ignores the word “to” at the beginning of the phrase “to

permit access,” which suggests that the handguard’s forward end

is open for the purpose of providing access to the operating

system’s components. See Innova/Pure Water, Inc. v. Safari

Water Filtration Sys., Inc., 381 F.3d 1111, 1119 (Fed. Cir.

2004) (“[A]ll claim terms are presumed to have meaning in a

claim.”).

Second, Davies’ interpretation of the plain meaning of the

phrase “to permit access” would seemingly require a finding that

any rifle with an open-fronted handguard could infringe the ‘722

patent, regardless of how the user accessed the operating system

11 components. For example, under Davies’ proposal, a rifle with

its operating system components at the rear of and behind the

handguard could still infringe the ‘722 patent if it had a

handguard with an open forward end, because the handguard does

not prevent access to the operating system components. Nothing

in the intrinsic evidence supports so broad a definition.

Instead, the ‘722 patent’s prosecution history shows that

the patentee contemplated that the open forward end of the

handguard would provide access to the operating system’s

components. See doc. no. 64-5 at 12 (noting that the “open end

of the channel provides access to the barrel coupling”); see

also doc. no. 52-16 at 14 (“Again this specifies that the piston

can be removed from the forward end . . . .”). This

construction is further supported by “the grammatical structure

of the claim language itself,” HowLink Glob. LLC v. Network

Commc’ns Int’l Corp., 561 F. App’x 898, 903 (Fed. Cir. 2014),

because the use of the infinitive, “to permit,” necessarily

means “in order to permit.” Thus, the prosecution history shows

that permitting access to the operating system’s components is

the reason for the handguard’s forward end being open.

Although the parties assert that the phrase “to permit

access” invokes its plain and ordinary meaning and that the

court need not construe the phrase beyond the original language,

12 Davies’ briefing suggests that some clarification of the

phrase’s meaning is necessary. Therefore, the court construes

the phrase “to permit access” to mean “for the purpose of

permitting access.”

C. Summary

The court construes the “open to permit access” limitation

of Claim 1 to mean a tubular handguard with “the forward end

being open for the purpose of permitting access to the barrel

coupling and end plug of the operating system.”

II. Infringement

“In order ‘to prove infringement, the patentee must show

that an accused product embodies all limitations of the claim

either literally or by the doctrine of equivalents.’” Millipore

Corp. v. W.L. Gore & Assocs., Inc., 750 F. Supp. 2d 253, 271 (D.

Mass. 2010) (quoting Amgen Inc. v. F. Hoffman–LA Roche Ltd., 580

F.3d 1340, 1374 (Fed. Cir. 2009) (alterations omitted)).

Accordingly, the court may grant summary judgment of non-

infringement only if, upon construction of the claims and with

all reasonable factual inferences drawn in favor of the non-

movant, there is no genuine issue as to whether the accused

product is encompassed by the patent claims either literally or

under the doctrine of equivalents. Novartis Corp. v. Ben Venue

13 Labs., Inc., 271 F.3d 1043, 1046 (Fed. Cir. 2001); see also Bai,

160 F.3d at 1353-54.

A. Literal Infringement

“To establish literal infringement, every limitation set

forth in a claim must be found in an accused product, exactly.

Thus, if any claim limitation is absent from the accused device,

there is no literal infringement as a matter of law.” Becton,

Dickinson and Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249,

1253 (Fed. Cir. 2010) (internal quotation marks, citations, and

alterations omitted). “Literal infringement of a properly

construed claim is a question of fact.” Applied Med. Res. Corp.

v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed. Cir. 2006).

Therefore, the court must determine whether, after resolving all

inferences in favor of the patentee, a reasonable jury could

find literal infringement. Akzo Nobel Coatings, Inc. v. Dow

Chem. Co., 811 F.3d 1334, 1341 (Fed. Cir. 2016).

As shown in the manual for Ruger’s SR-556 rifle, one of the

accused rifles, the lower portion of the forward end of the

rifle’s handguard extends past the upper portion:

14 Doc. no. 52-11 at 11-12.6 The piston assembly and end plug are

atop the barrel coupling, which is attached to the barrel of the

rifle:

6 The parties agree that, for purposes of this motion, the other accused rifle, the SR-762 AR-style rifle, has the same features as the SR-556 AR-style rifle.

15 Id. at 11.7 When the rifle is fully assembled, a portion of the

operating system sits on top of the lower portion of the

handguard, leaving certain parts of the barrel coupling, as well

as the end plug, in front of the handguard:

Doc. no. 49-4 at 4.

Ruger argues that there is no genuine issue of material

fact as to whether the accused rifles literally infringe the

‘722 patent because the accused rifles’ handguard is not open to

permit access to operating system components. Davies disagrees.

Rather, according to Davies, the Ruger handguard “cuts away to

allow the barrel coupling and the end plug of the rifle to be

7 At the December 2 hearing, the parties disagreed over what part of the components attached to the barrel represented the barrel coupling in the picture above. Ruger asserted that the barrel coupling consisted only of the front portion of the components directly wrapped around the barrel. Davies asserted that everything other than the end plug and the front sight (which sits above the other components and stands straight up) represents the barrel coupling. At this stage, because the court is obligated to give Davies every reasonable inference, the court assumes without deciding that Davies’ assertion is correct.

16 accessed without restriction from the handguard.” Doc. no. 52-1

at 15.

If the ‘722 patent claimed only a handguard, then Davies’

argument that the forward end of the accused rifles’ handguard

is open may have merit. The ‘722 patent, however, claims a

rifle and, therefore, the court must look to whether the fully

assembled rifle meets the limitations of the asserted claims.

See, e.g., Sunbeam Prods., Inc. v. HoMedics, Inc., 412 F. App’x

263, 268 (Fed. Cir. 2010) (holding that the patent at issue

“claims a utility scale, not an unassembled scale or a method of

assembling a scale, so the relevant state for purposes of

infringement is the fully assembled scale”).

When assembled, the barrel coupling and the end plug of the

operating system sit within and/or extend past the cut-away

portion of the forward end of the handguard. By doing so, those

components block the forward end of the handguard. In other

words, when the accused rifles are assembled, the forward end of

the handguard is not “open to permit access” to the relevant

components of the operating system.

Davies contends that because the lower portion of the

handguard on the accused rifles extends past the upper portion,

the handguard is open. As discussed above, however, that

argument is directly contradicted by the ‘722 patent’s

17 prosecution history. The patentee distinguished the

Langendorfer rifle by asserting that the forward end of the

Langendorfer handguard is not “open” if it is obstructed by or

attached to another portion of the rifle, including operating

system components. Doc. no. 52-16 at 12.

Here, when assembled, the forward end of the accused

rifles’ handguard is obstructed by and attached to the barrel

coupling and end plug. Thus, when assembled, the forward end of

the accused rifles’ handguard is not “open.” Therefore, even

giving Davies every reasonable inference, the accused rifles do

not literally infringe the ‘722 patent. Accordingly, Ruger is

entitled to summary judgment as to literal infringement.

B. Doctrine of Equivalents

Ruger also seeks summary judgment of noninfringement under

the doctrine of equivalents. Under the doctrine of equivalents,

a product that does not literally infringe the express terms of

a patent claim may nonetheless be found to infringe if there is

“equivalence” between the elements of the accused product and

the claimed elements of the patented invention. See Graver Tank

& Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950).

“[T]he doctrine of equivalents must be applied to individual

elements of the claim, not to the invention as a whole.”

18 Warner–Jenkinson Co., Inc. v. Hilton Davis Chem. Co., 520 U.S.

17, 29 (1997).

In applying the doctrine of equivalents, the court must ask

“whether an asserted equivalent represents an ‘insubstantial

difference’ from the claimed element, or ‘whether the substitute

element matches the function, way, and result of the claimed

element.’” Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1356

(Fed. Cir. 2012) (quoting Warner-Jenkinson, 520 U.S. at 40).

Thus, to be awarded summary judgment of noninfringement under

the doctrine of equivalents, defendant must show that, giving

the patentee every reasonable inference, the accused products do

not meet each prong of the function-way-result test or the

insubstantial differences test. Augme Techs., Inc. v. Yahoo!

Inc., 755 F.3d 1326, 1336 (Fed. Cir. 2014).

There are certain limitations to the doctrine of

equivalents. Ruger invokes two of them. One such limitation is

prosecution history estoppel, whereby “the surrender of subject

matter during patent prosecution creates a presumption that the

patentee is precluded from recapturing that subject matter

through the doctrine of equivalents.” AquaTex Indus., Inc. v.

Techniche Sols., 479 F.3d 1320, 1325 (Fed. Cir. 2007). As

another, “if a court determines that a finding of infringement

under the doctrine of equivalents ‘would entirely vitiate a

19 particular claim[ed] element,’ then the court should rule that

there is no infringement under the doctrine of equivalents.”

Lockheed Martin Corp. v. Space Sys./Loral, Inc., 324 F.3d 1308,

1321 (Fed. Cir. 2003) (quoting Bell Atl. Network Servs., Inc. v.

Covad Commc’ns Grp., Inc., 262 F.3d 1258, 1280 (Fed. Cir.

2001)).

Ruger does not address whether its accused rifles meet the

“open to permit access” limitation via equivalence, either by

way of the insubstantial differences test or the function-way-

result test. Instead, Ruger argues only that both prosecution

history estoppel and vitiation require a finding that the

accused rifles do not infringe the ‘722 patent by virtue of the

doctrine of equivalents.

1. Prosecution History Estoppel

It is well-settled that “[t]he doctrine of equivalents

allows the patentee to claim those insubstantial alterations

that were not captured in drafting the original patent claim but

which could be created through trivial changes.” Festo Corp. v.

Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd, 535 U.S. 722, 733

(2002) (“Festo I”). “‘However, prosecution history estoppel may

bar the patentee from asserting equivalents if the scope of the

claims has been narrowed by amendment during prosecution.’”

Felix v. Am. Honda Motor Co., Inc., 562 F.3d 1167, 1181–82 (Fed.

20 Cir. 2009) (quoting Honeywell Int’l, Inc. v. Hamilton Sundstrand

Corp., 370 F.3d 1131, 1139 (Fed. Cir. 2004) (en banc)). Whether

prosecution history estoppel bars the availability of the

doctrine of equivalents in an infringement action is a question

of law. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki

Co., Ltd., 344 F.3d 1359, 1367 (Fed. Cir. 2003).

“[P]rosecution history estoppel can occur during

prosecution in one of two ways, either (1) by making a narrowing

amendment to the claim (‘amendment-based estoppel’) or (2) by

surrendering claim scope through argument to the patent examiner

(‘argument-based estoppel’).” Conoco, Inc. v. Energy & Envtl.

Int’l, L.C., 460 F.3d 1349, 1363 (Fed. Cir. 2006). Here, Ruger

invokes amendment-based estoppel.8 Under that doctrine, “a

narrowing amendment made to satisfy any requirement of the

Patent Act may give rise to an estoppel.” Festo I, 535 U.S. at

736. “A patentee’s decision to narrow his claims through

amendment may be presumed to be a general disclaimer of the

territory between the original claim and the amended claim.”

Id. at 740. The rationale is that “the inventor might

[otherwise] avoid the PTO’s gatekeeping role and seek to

Both in its reply memorandum and at the hearing on its 8

motion for summary judgment, Ruger expressly disclaimed application of argument-based estoppel.

21 recapture in an infringement action the very subject matter

surrendered as a condition of receiving the patent.” Id. at

734.

The patentee filed the application that matured into the

‘722 patent on June 14, 2006. This application was a divisional

patent application.9 Its claims as originally filed were

directed at the composition of a rifle’s operating system.10

A divisional application is “‘[a] later application for an 9

independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application.’” Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 1360 (Fed. Cir. 2008) (quoting Manual of Patent Examining Procedure § 201.06 (8th ed., Rev.5, 2006)).

10 For example, Claim 1 as originally filed recited:

In a rifle having an upper receiver carrying a bolt carrier and a barrel attached to the upper receiver, an operating system comprising: a piston assembly coupled to the barrel for receiving propelling gasses from the barrel, the piston assembly including a piston moveable between a retracted position and an extended position; the piston being coupled to the bolt carrier for movement of the bolt carrier from a closed position to an open position as the piston moves from the retracted position to the extended position; and a resilient member positioned between the piston and the bolt carrier for delaying and storing a portion of force generated by the propelling gases.

Doc. no. 49-7 at 31.

22 None of the claims so much as mentioned a handguard. On June

16, 2006, the patentee submitted a pre-examination amendment.

See doc. no. 52-13. By that amendment, the patentee cancelled

all original claims and submitted a set of new claims: those

that eventually matured into the ‘722 patent. These claims were

directed at a rifle with an operating system and a tubular

handguard.11 The new handguard limitation included the

requirement of “the end [of the handguard] being open to permit

access” to certain components. Id. at 4.

Ruger argues that this amendment prevents Davies from

challenging as infringing any equivalent form of a handguard.

Prosecution history estoppel, however, does not apply unless the

11For example, Claim 30 (which matured into Claim 1 of the ‘722 patent) recited:

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 along the barrel and terminating in a barrel coupling; and a tubular handguard having an end and a channel extending therealong, the tubular handguard received about the barrel with the channel providing clearance for the operating system and the end being open to permit access to the barrel coupling of the operating system.

Doc. no. 52-13 at 3.

23 patentee makes an amendment that “narrows the patent’s scope.”12

Felix, 562 F.3d at 1182 (quoting Festo I, 535 U.S. at 736).

As demonstrated here, the patentee did not amend his prior

claims to “add” the handguard limitation and thereby narrow

them; he cancelled the prior claims and submitted a new set of

claims directed at a distinct invention—the handguard.13 This

is not the variety of “narrowing amendment” whereby the

patentee, by surrendering subject matter, may be estopped from

asserting its equivalent. See, e.g., Desper Prods., Inc. v.

QSound Labs, Inc., 157 F.3d 1325, 1338 (Fed. Cir. 1998) (“In

determining the scope of what, if any, subject matter has been

surrendered, the standard is an objective one: what would a

reasonable competitor reading the prosecution history conclude

has been surrendered.”). Were Ruger to have its way,

prosecution history estoppel would bar invocation of the

doctrine of equivalents for almost any claim that matures from a

12The Supreme Court in Festo I set forth this principle in the context of prosecution history disclaimer. However, the “same general tenets” apply to both prosecution history disclaimer and prosecution history estoppel, Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1063 (Fed. Cir. 2016) (citing cases), and courts apply the principle to prosecution history estoppel, see Felix, 562 F.3d at 1182; Regents of Univ. of Cal. v. Dakocytomation Cal., Inc., 517 F.3d 1364, 1377 (Fed. Cir. 2008).

13That the patentee ultimately reintroduced claim limitations directed at the piston assembly in his October 7, 2009 amendments, see doc. no. 52-16 at 4, does not bear on the effects of his earlier June 16, 2006 amendments.

24 divisional patent application. That simply is not the law.

See, e.g., Invitrogen Corp. v. Clontech Labs., Inc., 429 F.3d

1052, 1078 (Fed. Cir. 2005) (prosecution history estoppel did

not apply to a divisional application).

Therefore, Ruger has not shown that prosecution history

estoppel bars a claim under the doctrine of equivalents for the

handguard limitation, including the “open to permit access”

2. Vitiation

The concept of vitiation derives from the requirement that

the doctrine of equivalents must be applied to claims “on an

element-by-element basis,” so that every claimed element of the

invention—or its equivalent—is present in the accused product.

Warner–Jenkinson, 520 U.S. at 40. “‘[I]f a theory of

equivalence would entirely vitiate a particular claim element,

partial or complete judgment should be rendered by the court.’”

Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.,

843 F.3d 1315, 1344 (Fed. Cir. 2016) (quoting Warner-Jenkinson,

520 U.S. at 40).

“Of course, in every case applying the doctrine of

equivalents, at least one claimed element is not literally

present in the accused product.” Deere, 703 F.3d at 1356.

“Thus, the doctrine of equivalents, by its very nature, assumes

25 that some element is missing from the literal claim language but

may be supplied by an equivalent substitute.” Id. Vitiation is

“a legal determination that the evidence is such that no

reasonable jury could determine two elements to be equivalent.”

Brilliant Instruments, Inc. v. Guidetech, LLC, 707 F.3d 1342,

1347 (Fed. Cir. 2013) (internal quotation marks and citation

omitted); see also Charles Mach. Works, Inc. v. Vermeer Mfg.

Co., 723 F.3d 1376, 1380 (Fed. Cir. 2013) (“Saying that a claim

element would be vitiated is akin to saying that there is no

equivalent to the claim element in the accused device based on

the well-established ‘function-way-result’ or ‘insubstantial

differences’ tests.” (internal quotation marks, citation, and

alteration omitted)).

“There is no set formula for determining whether a finding

of equivalence would vitiate a claim limitation, and thereby

violate the all limitations rule.” Freedman Seating Co. v. Am.

Seating Co., 420 F.3d 1350, 1359 (Fed. Cir. 2005). “Rather,

courts must consider the totality of the circumstances of each

case and determine whether the alleged equivalent can be fairly

characterized as an insubstantial change from the claimed

subject matter without rendering the pertinent limitation

meaningless.” Id.

26 Ruger argues that a jury could not find that the accused

rifles infringe the ‘722 patent under the doctrine of

equivalents without vitiating the limitation requiring the

handguard to have a forward end being “open to permit access.”

Specifically, Ruger argues that because its handguard could not

be considered “open” under any claim construction, any finding

of equivalency would read out that limitation.

As discussed above, the court agrees that the handguard in

the accused rifles does not satisfy the court’s construction of

the “open to permit access” limitation, and thus the accused

rifles do not literally infringe the claims of the ‘722 patent.

It is not so clear, however, that Ruger has demonstrated that

its rifles are “an entirely different structure” from that

claimed, doc. no. 49-1 at 16, such that the court can conclude,

as a matter of law, that a finding of equivalence would vitiate

the “open to permit access” limitation.

In support of its vitiation argument, Ruger likens its

rifles to the rifle of the Langendorfer patent, which the

patentee distinguished during prosecution. In so doing, Ruger

appears to be relying on argument-based estoppel, a doctrine

distinct from vitiation and one that Ruger expressly disclaimed

in its reply memorandum and at the hearing.

27 Ruger’s argument goes like this. The Langendorfer patent

discloses a rifle, the operating system components of which sit

outside of and in front of the handguard, which is shown in the

dotted lines on the left portion of the diagram below:

Doc. no. 52-18 at 2. During prosecution of the ‘722 patent, the

patentee distinguished the Langendorfer rifle because it did not

have an open-fronted handguard.

Ruger argues that, like the Langendorfer rifle, “access to

the operating systems of [its] rifles occurs well in front of

the Ruger handguard.” Doc. no. 49-1 at 16. According to Ruger,

that shows that its handguard is not “open” in a manner that

permits access to the operating system components. In other

words, Ruger argues that because the accused rifles contain the

same structure as the Langendorfer rifle, a finding that the

accused rifles infringe the ‘722 patent would vitiate the

requirement that the handguard be open.

28 Assuming without deciding that the accused rifles contain

the same structure as the Langendorfer rifle, Ruger fails to

explain how that similarity of structure would vitiate the “open

to permit access” limitation of the ‘722 patent as applied to

Ruger’s rifle. In short, while the patentee’s representations

regarding the Langendorfer rifle during prosecution of the ‘722

patent may support a theory of argument-based estoppel, Ruger

has not shown that those representations support its argument

based on vitiation. See, e.g., Tritek Techs., Inc. v. United

States, 67 Fed. Cl. 735, 752 (Fed. Cl. 2005), aff’d, 208 F.

App’x 869 (Fed. Cir. 2006) (noting the differences between

argument-based estoppel, which relies on representations made by

the patentee during the prosecution history, and vitiation,

which is a legal determination that application of the doctrine

of equivalents to this claim limitation would “effectively erase

that limitation from the claim”).

To support its vitiation argument, Ruger relies on Panduit

Corp. v. HellermannTyton Corp., 451 F.3d 819 (Fed. Cir. 2006).

In Panduit, the Federal Circuit Court of Appeals held that

vitiation precluded application of the doctrine of equivalents.

The patent at issue in Panduit disclosed a “modular offset power

box and communication extension for a multi-channel power and

communication wiring and raceway system.” Id. at 821 (internal

29 quotation marks omitted). Claim 1 of that patent “require[d] an

opening in an abutment portion through which wires may pass from

a trunking duct into an offset power box.” Id. at 830. In the

accused product, “the wall abutting the trunking duct [was]

solid with no cutaway,” and the wires in the accused product

circumvented the abutment. Id. at 824. The Court of Appeals

concluded that, “[t]o extend the scope of the claim to encompass

an accused device in which wires bypass the abutment portion

altogether would necessarily read the ‘opening’ limitation out

of the claim.” Id. at 830.

Ruger contends that, similar to Panduit, application of the

doctrine of equivalents to this case would read the “open to

permit access” limitation out of Claim 1 in the ‘722 patent

because Ruger’s handguard is not open. The holding of Panduit

may have supported Ruger’s argument if the relevant limitation

at issue in this case were simply a handguard with an open

forward end. As the parties made clear in their filings and at

the hearing, however, the relevant limitation is a handguard

with a forward end “being open to permit access” to certain

components of the operating system. Thus, while Ruger’s

handguard is not literally open, that fact does not necessarily

preclude application of the doctrine of equivalents to the “open

to permit access” limitation. See Nova Biomedical Corp. v. i-

30 Stat Corp., 215 F.3d 1351, 1999 WL 693881, at *5 (Fed. Cir.

Sept. 3, 1999) (per curiam) (unpublished decision) (reversing

the district court’s grant of summary judgment of

noninfringement based on vitiation “because not every word in a

claim is a separate limitation . . . . [and] [t]he limitation

here includes many other components”); Perkin-Elmer Corp. v.

Westinghouse Elec. Corp., 822 F.2d 1528, 1533 n.9 (Fed. Cir.

1987) (“It is the limitation of a claim that counts in

determining both validity and infringement, and a limitation may

include descriptive terms . . . .”).

In Panduit, the court held that to find that an accused

device in which wires circumvent the abutment portion entirely

would render meaningless, and thus vitiate, the limitation that

the abutment portion have an opening for wires to pass through.

Panduit, 451 F.3d at 830. In contrast, viewing the evidence in

the light most favorable to Davies, application of the doctrine

of equivalents to Ruger’s rifle would not render meaningless the

limitation of a tubular handguard being open to permit access to

operating system components. Although the forward end of the

Ruger handguard is not “open” under the court’s claim

construction, the cut-out in the upper portion of the forward

end of the handguard allows the user to access operating system

components. In other words, the Ruger handguard is designed to

31 allow access to the operating system components by having them

sit in a cut-out portion of the front end of the handguard.

Thus, applying the doctrine of equivalents to the Ruger

handguard does not read the “open to permit access” limitation

out of Claim 1. Cordis Corp. v. Bos. Sci. Corp., 561 F.3d 1319,

1330 (Fed. Cir. 2009) (affirming district court’s finding that

an accused product’s “circular arcs” did not vitiate the

limitation that the product must have “corners”); Wright Med.

Tech., Inc. v. Ostenoics Corp., 122 F.3d 1440, 1442-45 (Fed.

Cir. 1997) (reversing summary judgment of lack of infringement

under the doctrine of equivalents because it was a question of

fact as to whether the element of “an intermedullary rod portion

adapted to . . . extend through the narrowest portion of the

human femur” could be met by equivalence with an accused

intermedullary rod that did not extend through the femur).14

For these reasons, Ruger has not persuaded the court that

the doctrine of vitiation applies here.15

14Although at least a portion of the relevant operating system components extends beyond the Ruger handguard, that fact is not dispositive in Ruger’s favor. As discussed above, the end plug in the rifle disclosed in the ‘722 patent extends past the handguard.

15For similar reasons, none of the other cases cited by Ruger in support of its vitiation argument changes the court’s analysis above.

32 3. Infringement by Equivalence

Ruger argues only that prosecution history estoppel and

vitiation preclude a finding of infringement by virtue of the

doctrine of equivalents. It does not argue that its products do

not infringe under either the insubstantial differences test or

the function-way-result test. “An element in the accused

product is equivalent to a claimed element if the differences

between the two elements are ‘insubstantial’ to one of ordinary

skill in the art.” Wi-LAN, Inc. v. Apple Inc., 811 F.3d 455,

463 (Fed. Cir. 2016) (quoting Warner–Jenkinson, 520 U.S. at 40).

One way of demonstrating this is to show, “on an element-by-

element basis that ‘the accused product performs substantially

the same function in substantially the same way with

substantially the same result as each claim limitation of the

patented product.’” Intendis GMBH v. Glenmark Pharm. Inc., USA,

822 F.3d 1355, 1360 (Fed. Cir. 2016) (quoting Crown Packaging

Tech., Inc. v. Rexam Beverage Can Co., 559 F.3d 1308, 1312 (Fed.

Cir. 2009)).

As discussed above, the design of the accused rifles’

handguard allows for access to the end plug and barrel coupling

because Ruger cut out the upper portion of the forward end of

the handguard. The barrel coupling sits, at least in part,

within the cut-out portion of the handguard, and the design of

33 the handguard thereby allows the operator to clean the operating

system by accessing the end plug and barrel coupling without

disassembling the handguard. Viewing the evidence in the light

most favorable to Davies, there is a genuine issue of material

fact as to whether the handguard in the accused rifles, while

not literally having a forward end “being open to permit

access,” performs substantially the same function in the same

way and with the same result as the one described in the ‘722

patent with respect to the “open to permit access” limitation.

Therefore, Ruger is not entitled to summary judgment with

respect to infringement under the doctrine of equivalents.

Conclusion

For the foregoing reasons, Sturm, Ruger & Company, Inc.’s

motion for summary judgment (doc. no. 49) is granted with

respect to literal infringement of the ‘722 patent, but denied

with respect to infringement of the ‘722 patent under the

SO ORDERED.

__________________________ Landya McCafferty United States District Judge

February 15, 2017 cc: Laura L. Carroll, Esq. Zachary Rush Gates, Esq. Chloe F.P. Golden, Esq.

34 James F. Laboe, Esq. Tod M. Melgar, Esq. Robert H. Miller, Esq. Glenn Schuyler Orman, Esq. Michael J. Pisko, Esq. Scott D. Stimpson, Esq. Jonathan T. Suder, Esq. Brian David Thomas, Esq. Decker A. Cammack, Esq.