Sig Sauer v. Freed Designs

2016 DNH 096

• Court: District Court, D. New Hampshire
• Decided: June 6, 2016
• Docket: 14-cv-461-SM
• Status: Published

Opinion

UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Sig Sauer, Inc.; Check-Mate Industries, Inc.; Check-Mate International Products, Inc.; Nordon, Inc.; and Thomas Pierce d/b/a Pierce Design, Plaintiffs

v. Case No. 14-cv-461-SM Opinion No. 2016 DNH 096 Freed Designs, Inc., Defendant

O R D E R

The parties propose differing constructions of the

following terms as used in the ‘764 patent at issue 1: “shoulder”

and “bottom shoulder.”

The patent protects the invention of a grip extender for

handguns. The grip extender attaches to, and facilitates the

convenient use of, longer magazines in a handgun by providing a

continuous and comfortable hand grip. Oversimplified perhaps,

but it is enough, for current purposes, to say that the

invention operates in the following way. A magazine slides

downward into the grip extender and, as it travels, the

1 United States Patent No. 6,928,764. 1 magazine’s floor plate compresses pliable vertical “ribs” along

the inner surface of the extender until the floor plate clears

those ribs, at which point the bottom of the floor plate comes

to rest on a “tang,” while the bottom of the “ribs” expand back

over the top of the floor plate, thereby securing the magazine

in the extender by means of the opposing pressure between the

ribs and tang. The terms at issue are used in the following

context in Claim 1:

. . . said collar having a size and shape sufficient to elastically receive and grip the magazine and magazine floor plate thereby securely retaining the collar and having at least one pair of opposed tangs oriented inward from the interior side walls of the collar; and b) further comprising at least one pair of opposed ribs, said ribs oriented inward from the interior side walls of the collar, with a bottom shoulder of said ribs distanced above the tangs, said distance approximately equal the determinable thickness of the magazine floor plate; and c) when sliding the grip extender into its final position on the magazine, a step of the said tangs engages the lower surface of the floor plate and captures the corresponding upper surface of floor plate against said the bottom shoulders of the opposed ribs. (Emphasis supplied.)

The functional description in Claim 1 seems unambiguous and

is easily understood. The ribs and tangs hold the magazine

flange securely between them, thereby stabilizing and securing

the extender to the magazine. It is equally clear that the term

“bottom shoulder” is used in direct reference to the “ribs” to

describe the bottom end of the ribs that engage the upper part

2 of the flange. (I use “flange” as a common English word easily

understood as an equivalent but less cumbersome means of

expressing “a floor plate, of determinable thickness, with a

lower surface and an upper surface, with said floor plate also

having a peripheral surface larger than a peripheral surface of

a corresponding body of the magazine.”)

But what does the phrase “bottom shoulder” of the ribs

mean, as it is used in the patent? Or, more correctly, what

would a person of ordinary skill in the pertinent art think it

means? Neither party deemed it useful to offer the opinion of a

person of ordinary skill in a pertinent art, though they were

given that opportunity at the claim construction hearing. Both

counsel are content to rest on the papers filed.

It is well-understood that “the words of a claim are

generally given their ordinary and customary meaning.” Phillips

v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (citations

and internal punctuation omitted). “We have made clear,

moreover, that the ordinary and customary meaning of a claim

term is the meaning that term would have to a person of ordinary

skill in the art in question at the time of the invention, i.e.,

as of the effective filing date of the patent application.” Id.

at 1313 (citations omitted). When construing claim terms one

3 relies primarily upon “intrinsic evidence,” i.e., the claims,

the specification, and the prosecution history, reading the

terms in the context of the claim and the patent as a whole.

See Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d

1271, 1276 (Fed. Cir. 2013).

The words used in a claim must be given their common

meanings unless the inventor used them differently. Inline

Plastics Corp. v. Tenneco Packing Corp., 979 F. Supp. 79, 83 (D.

Conn. 1997), Envirotech Corp. v. Al George, Inc., 730 F.2d 753,

759 (Fed. Cir. 1984). And, of course, the common meaning is the

meaning a person of ordinary skill in the relevant art would

give to the claim. Id.

As in Inline Plastics, the term “shoulder” or here, “bottom

shoulder,” as used in Claim 1 of the ‘764 Patent, “is consistent

with the relevant, common dictionary meaning of the word

‘shoulder,’ that is, any projection for keeping something in

place, or preventing movement past the projection.” Inline

Plastics, at 83 (citing Funk and Wagnall, Standard College

Dictionary, (1963). Nothing in the ‘764 patent, or the

pleadings filed, suggests that the inventor meant to use the

term “shoulder” differently. Indeed, in context, the common

4 meaning is entirely consistent with the described function of

the invention.

A reasonable person of ordinary skill in the field of

mechanical or product design engineering related to small arms

manufacturing would readily understand the term “shoulder,” in

the context of Claim 1, to mean that bottom surface of the

described ribs that engages the upper part of the magazine

flange. The described “shoulder” is plainly meant to provide an

abutment between the ribs themselves and the upper part of the

flange – an opposing force capturing or containing the flange,

restricting its movement, particularly upwards, and securing the

extender to the magazine (in combination with the tangs).

Accordingly, the meaning of “shoulder” is construed

consistently with its common dictionary meaning, as described in

Inline Plastics Corp. In the context of the ‘764 patent, then,

“bottom shoulder” means that part of the described ribs, at the

bottom end, projecting or contoured for capturing the upper

surface of a magazine floor plate as an abutment, to prevent

movement of the floor plate, particularly upwardly, while the

extender is in use.

5 The parties’ proposed definitions are deficient in a number

of ways, but extensive discussion is not warranted. It should

perhaps be noted, however, that plaintiffs’ proposed 90-degree

plane limitation is fundamentally inconsistent with the varied

contour expectation inherent in the common understanding of the

term “shoulder.” The construct of the described rib “shoulder”

would be readily understood by one skilled in the mechanical and

design arts related to small arms manufacture as including

varied slopes, widths, spacings, and contact points,

consistently with the ordinary definition of the term. The

contour of the “shoulders,” therefore, can be expected to vary

widely, as the term is a general descriptor of a bottom rib

configuration that serves as an abutment, and “captures” and

secures the upper surface of the flange on the bottom of the

inserted magazine.

SO ORDERED.

____________________________ Steven J. McAuliffe United States District Judge

June 6, 2016

cc: Laura L. Carroll, Esq. Zachary R. Gates, Esq. Neal E. Friedman, Esq. Michael J. Bujold, Esq.