January 15, 2022

Ordinary Meaning Can Be Broader than Disclosed Embodiments

In Evolusion Concepts, Inc. v. HOC Events, Inc., [2021-1963] (January 14, 2022), the Federal Circuit reversed the grant of summary judgment of non-infringement of U.S. Patent No. 8,756,845 on a “Method and Device for Converting Firearm with Detachable Magazine to a Firearm with Fixed Magazine,” reversed the denial of summary judgment of direct infringement as to the independent claims 1 and 8, and remanded for further proceedings.

The district court held that the term “magazine catch bar” in the asserted claims of the ’845 patent excludes a factory installed magazine catch bar. Claim 15 requires removing “the factory installed magazine catch bar” and then installing “a magazine catch bar.” From this, the district 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.

Because a term that appears in multiple claims should be given the same meaning in all those claims, the court held that the term “magazine catch bar” in claims 1 and 8 similarly must exclude a factory-installed magazine catch bar. This claim construction precluded literal infringement because Juggernaut’s products use the factory-installed magazine catch bar. The court also determined that Juggernaut does not infringe under the doctrine of equivalents.

The Federal Circuit noted the principle that says “the same phrase in different claims of the same patent should have the same meaning” is a strong one and can be overcome only if it is clear that the same phrase has different meanings in different claims.

The Federal Circuit noted that while claim 15 was directed to a method, claims 1 and 8 claimed a firearm and a device, respectively. The Federal Circuit said that nothing in the language of claims 1 and 8 limits the scope of the generic term “magazine catch bar” to exclude one that was factory installed — specifically, as Juggernaut asserts, factory installed as part of an original firearm with a detachable magazine.

The Federal Circuit said that Juggernaut was correct 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, but Juggernaut was incorrect that the use of “magazine catch bar” in claim 15 narrows the meaning of the term to support the urged exclusion of factory-installed magazine catch bars. The Federal Circuit agreed that claim 15 required removing a factory installed magazine catch but it did not require discarding that catch bar, or installing a different catch bar.

The Federal Circuit concluded that the specification supports the ordinary-meaning interpretation of “magazine catch bar.” The Federal Circuit said the specification nowhere limits the scope of a “magazine catch bar” to exclude factory-installed ones from the assembly that achieves the fixed-magazine goal.

Juggernaut argued that the disclosed embodiments do not illustrate OEM magazine catch bars, but the Federal Circuit said that cannot make a difference in this case. The Federal Circuit has repeatedly held that “it is not enough that the only embodiments, or all of the embodiments, contain a particular limitation to limit claims beyond their plain meaning.” The Federal Circuit thus construe the term “magazine catch bar” according to its ordinary meaning, which includes a factory installed magazine catch bar.