Carson Cheng et al v. AIM Sports, Inc. et al

Filing 114

MINUTE ORDER IN CHAMBERS Construing Patent Claims by Judge Philip S. Gutierrez: Pending before the Court are Plaintiffs' and Defendants' proposed Markman patent claims constructions. After considering the moving and opposing papers, as well as argument at the March 4, 2011 hearing, the Court construes the contested patent claims as follows. (see document for further details) (bm)

O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Carson Cheng, et al. v. AIM Sports, Inc., et al.

Present:

Date

April 14, 2011

The Honorable Philip S. Gutierrez, United States District Judge

Wendy K. Hernandez
Deputy Clerk

Not Present
Court Reporter

Attorneys Present for Plaintiff(s):

Attorneys Present for Defendant(s):

Not Present
Proceedings:

n/a
Tape No.

Not Present

(In Chambers) Order Construing Patent Claims

Pending before the Court are Plaintiffs’ and Defendants’ proposed Markman patent
claims constructions. After considering the moving and opposing papers, as well as argument at
the March 4, 2011 hearing, the Court construes the contested patent claims as follows.
I.

Background

On May 20, 2010, Plaintiffs Carson Cheng (“Cheng”) and New Century Sci & Tech, Inc.
(collectively “Plaintiffs”) filed suit against Aim Sports, Inc., Guoping Cui, Ying Cui, Juan
Covarrubias, Qingdao Amber Sports Co., LTD, (“QASCO”), Shangdong International Economic
& Technical Development Co., LTD, (“SIET”), Combat Optical, Inc., and Micro World Corp.
(collectively “Defendants”) for patent infringement, unfair competition, and breach of fiduciary
duty. Compl. ¶¶ 36, 43, 50, 57, 64, 71, 78, 84, 90, 95.
Plaintiffs are designers, developers, and wholesale distributors of firearm-related tools,
accessories, and sporting optics. Compl. ¶¶ 13-14. Prior to December 2006, Defendants and
Plaintiffs maintained a business relationship that allowed Defendants to obtain access to tradesecret information belonging to Plaintiffs. Compl. ¶ 19. Some of the trade-secret information
involved manufacturing processes and information about product development of Plaintiffs’
patented products that Defendants allegedly infringed. Compl. ¶ 19.
In June 2007, Plaintiffs commenced the first round of litigation in this Court against
Defendants Aim Sports, Y. Cui and G. Cui, alleging, among other things, that they infringed a
number of patents owned by Cheng. Compl. ¶ 28. That case was settled in July 2008 and the
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

suit was dismissed with prejudice. Compl. ¶ 28. Subsequently, AIM Sports, Y. Cui and G. Cui
allegedly formed SIET and QASCO and continued to infringe upon Plaintiffs’ patents in
violation of the previous settlement agreement. Compl. ¶¶ 29-33.
The parties have asked the Court to construe seven patents registered to Cheng: Utility
Patent 6,754,987 (the “‘987 Patent”), Design Patent D555,455 (the “‘455 Patent”), Design Patent
D598,723 (the “‘723 Patent”), Design Patent D542,880 Patent (the “‘880 Patent’”), Design
Patent D555,750 (the “‘750 Patent”), Design Patent D555,751 (the “‘751 Patent”), and Design
Patent D543,605 (the “‘605 Patent”).
II.

Legal Standard

“[T]he interpretation and construction of patent claims, which define the scope of the
patentee’s rights under the patent, is a matter of law exclusively for the court.” Markman v.
Westview Instruments, Inc., 52 F.3d 967, 970-71 (Fed. Cir. 1995), aff’d, 517 U.S. 370, 116 S. Ct.
1384, 134 L. Ed. 2d 577 (1996).
Also, the Federal Circuit has “frequently stated 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) (en banc), cert. denied, 546 U.S. 1170, 126 S. Ct. 1332, 164 L. Ed. 2d 49 (2006)
(citation omitted). In fact, “the construction that stays true to the claim language and most
naturally aligns with the patent’s description of the invention will be, in the end, the correct
construction.” Id. at 1324.
The “ordinary and customary meaning of a claim term is the meaning that the 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 (citation omitted). “The inquiry into
how a person of ordinary skill in the art understands a claim term provides an objective baseline
from which to begin claim interpretation.” Id. (citation omitted). “That starting point is based
on the well-settled understanding that inventors are typically persons skilled in the field of the
invention and that patents are addressed to and intended to be read by others of skill in the
pertinent art.” Id. (citation omitted). “Importantly, the person of ordinary skill in the art is
deemed to read the claim term not only in the context of the particular claim in which the
disputed term appears, but in the context of the entire patent, including the specification.” Id.
In some cases, the ordinary meaning of claim language as understood by a
person of skill in the art may be readily apparent even to lay judges, and claim
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
construction in such cases involves little more than the application of the widely
accepted meaning of commonly understood words. In such circumstances, general
purpose dictionaries may be helpful. In many cases that give rise to litigation,
however, determining the ordinary and customary meaning of the claim requires
examination of terms that have a particular meaning in a field of art. Because the
meaning of a claim term as understood by persons of skill in the art is often not
immediately apparent, and because patentees frequently use terms
idiosyncratically, the court looks to those sources available to the public that show
what a person of skill in the art would have understood disputed claim language to
mean. Those sources include the words of the claims themselves, the remainder of
the specification, the prosecution history, and extrinsic evidence concerning
relevant scientific principles, the meaning of technical terms, and the state of the
art.

Id. at 1314 (internal citations and quotation marks omitted).
While considering the allowable sources of evidence to construe patent claims, a Court
must consider the hierarchy of importance that the Federal Circuit has created for those sources
of evidence. First, “the context in which a term is used in the asserted claim can be highly
instructive.” Id. at 1314. Also, the Federal Circuit has made clear that claims “must be read in
view of the specification, of which they are a part. ... [T]he specification is always highly
relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to
the meaning of a disputed term.” Id. at 1315 (internal citation and quotation marks omitted).
Furthermore, although the prosecution history “often lacks the clarity of the specification and
thus is less useful for claim construction purposes,” id. at 1317, it should also be considered and
given great weight as “intrinsic evidence.” Id. A Court may consider “extrinsic evidence, which
consists of all evidence external to the patent and prosecution history, including expert and
inventor testimony, dictionaries, and learned treatises.” Id. (citation and internal quotation
marks omitted). However, while extrinsic evidence can shed useful light on the relevant art, it is
less significant than the intrinsic record in determining the legally operative meaning of claim
language. Id.
A design patent in particular protects only “the novel, ornamental features of the patented
design,” not the functional elements. OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396,
1405 (Fed. Cir. 1997) (citation omitted). “Where a design contains both functional and nonfunctional elements, the scope of the claim must be construed in order to identify the nonfunctional aspects of the design as shown in the patent.” Egyptian Goddess, Inc. v. Swisa, Inc.,
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

543 F.3d 665, 680 (Fed. Cir. 2008) (en banc) (quotation omitted). If a certain design
“configuration is made imperative by the elements which it combines and by the utilitarian
purpose of the device,” it is functional and does not fall within the scope of a design patent. Lee
v. Dayton-Hudson Corp., 838 F.2d 1186, 1188 (Fed. Cir. 1988). “If, on the other hand, ‘there
are several ways to achieve the function of an article of manufacture, the design of the article is
more likely to serve a primarily ornamental purpose,’” and may be protected by an applicable
design patent. Richardson v. Stanley Works, Inc., 610 F. Supp. 2d 1046, 1049 (D. Ariz. 2009)
aff’d 597 F.3d 1288 (Fed. Cir. 2010) (quoting L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d
1117, 1123 (Fed. Cir. 1993)). When determining whether design patent protection exists, courts
should also consider: “whether the protected design represents the best design; whether
alternative designs would adversely affect the utility of the specified article; whether there are
any concomitant utility patents; whether the advertising touts particular features of the design as
having specific utility; and whether there are any elements in the design or an overall appearance
clearly not dictated by function.” Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452,
1456 (Fed. Cir. 1997).
“In construing a design patent claim, the scope of the claimed design encompasses its
visual appearance as a whole, and in particular the visual impression it creates.” Contessa Foods
Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) (internal quotation and
citation omitted). Generally, courts construing design patents should not “attempt to ‘construe’ a
design patent claim by providing a detailed verbal description of the claimed design.” Egyptian
Goddess, 543 F.3d at 677; see also Crocs Inc. v. Int’l Trade Com’n, 598 F.3d 1294, 1302-03
(Fed. Cir. 2010) (“This court has cautioned, and continues to caution, trial courts about excessive
reliance on a detailed verbal description in a design infringement case.”). Instead, design patent
construction is governed by drawings or other illustrations “adapted to a pictorial setting.”
Crocs Inc. v. Int’l Trade Com’n, 598 F.3d at 1302-03.
III.

Discussion

Plaintiffs claim that the various elements of each article are purely ornamental, while
Defendant insists that the various elements of each patented article are purely functional. As a
result, the Court separates the functional from the ornamental and finds that, to the extent the
ornamental elements of the articles need construction, the designs themselves as represented in
the illustrations contained in each patent are generally superior to any verbal description the
Court can provide. See, e.g., Dexas Int’l, Ltd. v. Office Max, Inc., No. CV 07-396, 2009 WL
252164, at *4 (E.D. Tex. Jan. 30, 2009) (reaching a similar conclusion and noting that the “risks
of undertaking such a description substantially outweigh the potential benefits in this case”).
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Date

Title

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

The Court construes each of the seven patents in turn.
A.

The 6,754,987 Patent

The parties do not dispute the following construction of the asserted claims in the ‘987
Patent, a patent covering a “magazine loader for ammunition preloaded with a stripper clip.” See
Dkt. #58, Ex. 2 (Joint Claims Construction Statement); see also Pl.’s Claims Construction Brief
3:14-18. As a result, the Court construes claims 1-24 of the ‘987 Patent as follows:
Claim

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Construction and Support

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
1. A magazine loader for loading ammos The elements of this claim have the plain
and ordinary meaning in light of the entire
in a magazine having an opening,
comprising: a loading holder having a specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
supplying opening end, an opposed
3; and Figures 2-4) and all other claims of
discharging opening end, a feeding
channel extended from said supplying the ‘987 Patent, and consistent with
opening end to said discharging opening dictionary definitions of the claim words.
The claim thus means:
end for slidably receiving the ammos,
and a guiding arrangement provided
within said feeding channel, wherein said 1. A magazine loader for loading ammos
discharging opening end of said loading in a magazine having an opening,
holder is capable of detachably mounting comprising: a loading holder having a
on the opening of the magazine so as to supplying opening end, an opposed
discharging opening end, a feeding
alignedly communicate said feeding
channel extended from said supplying
channel with the opening of the
magazine; and an ammo pusher, having a opening end to said discharging opening
pusher head, slidably engaged with said end for slidably receiving the ammos, and
a guiding arrangement provided within
guiding arrangement to substantially
guide said pusher head sliding from said said feeding channel, wherein said
supplying opening end of said loading discharging opening end of said loading
holder to said discharging opening end holder is capable of detachably mounting
on the opening of the magazine so as to
thereof for pushing the ammos within
alignedly communicate said feeding
said feeding channel of said loading
channel with the opening of the magazine;
holder into the magazine.
and an ammo pusher, having a pusher
head, slidably engaged with said guiding
arrangement to substantially guide said
pusher head sliding from said supplying
opening end of said loading holder to said
discharging opening end thereof for
pushing the ammos within said feeding
channel of said loading holder into the
magazine.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Date

Title

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
2. A magazine loader, as recited in claim The elements of this claim, and the claim
from which it depends, have the plain and
1, further comprising a striper clip
slidably disposed in said feeding channel ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
through said supplying opening end,
wherein said striper clip is arranged for column 2, line 66 through column 6, line
holding said ammos in position so as to 3; and Figures 2-4) and all other claims of
the ‘987 Patent, and consistent with
guide said ammos within said feeding
dictionary definitions of the claim words.
channel to align with said opening of
The claim thus means:
said magazine.
2. A magazine loader, as recited in claim
1, further comprising a striper clip slidably
disposed in said feeding channel through
said supplying opening end, wherein said
striper clip is arranged for holding said
ammos in position so as to guide said
ammos within said feeding channel to
align with said opening of said magazine.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
3. A magazine loader, as recited in claim The elements of this claim, and the claim
1, wherein said guiding arrangement has from which it depends, have the plain and
ordinary meaning in light of the entire
at least two slider rails formed on two
specification of the ‘987 Patent (especially
sidewalls of said loading holder to
slidably engage with two side edges of column 2, line 66 through column 6, line
said ammo pusher respectively, wherein 3; and Figures 2-4) and all other claims of
each of said slider rails is extended from the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
said supplying opening end of said
The claim thus means:
loading holder to said discharging
opening end thereof, so as to guide said
pusher head of said ammo pusher to slide 3. A magazine loader, as recited in claim
between said supplying opening end and 1, wherein said guiding arrangement has at
least two slider rails formed on two
said discharging opening end of said
sidewalls of said loading holder to slidably
loading holder.
engage with two side edges of said ammo
pusher respectively, wherein each of said
slider rails is extended from said
supplying opening end of said loading
holder to said discharging opening end
thereof, so as to guide said pusher head of
said ammo pusher to slide between said
supplying opening end and said
discharging opening end of said loading
holder.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
4. A magazine loader, as recited in claim The elements of this claim, and the claims
2, wherein said guiding arrangement has from which it depends, have the plain and
ordinary meaning in light of the entire
at least two slider rails formed on two
specification of the ‘987 Patent (especially
sidewalls of said loading holder to
slidably engage with two side edges of column 2, line 66 through column 6, line
said ammo pusher respectively, wherein 3; and Figures 2-4) and all other claims of
each of said slider rails is extended from the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
said supplying opening end of said
The claim thus means:
loading holder to said discharging
opening end thereof, so as to guide said
pusher head of said ammo pusher to slide 4. A magazine loader, as recited in claim
between said supplying opening end and 2, wherein said guiding arrangement has at
least two slider rails formed on two
said discharging opening end of said
sidewalls of said loading holder to slidably
loading holder.
engage with two side edges of said ammo
pusher respectively, wherein each of said
slider rails is extended from said
supplying opening end of said loading
holder to said discharging opening end
thereof, so as to guide said pusher head of
said ammo pusher to slide between said
supplying opening end and said
discharging opening end of said loading
holder.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Carson Cheng, et al. v. AIM Sports, Inc., et al.
5. A magazine loader, as recited in claim
2, wherein said loading holder further
has a guiding slot provided at a rear side
of said feeding channel, wherein said
striper clip is guided to slide along said
guiding slot for ensuring said ammos
retained in said feeding channel in
position.

Date

April 14, 2011

The elements of this claim, and the claims
from which it depends, have the plain and
ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
The claim thus means:

5. A magazine loader, as recited in claim
2, wherein said loading holder further has
a guiding slot provided at a rear side of
said feeding channel, wherein said striper
clip is guided to slide along said guiding
slot for ensuring said ammos retained in
said feeding channel in position.
6. A magazine loader, as recited in claim The elements of this claim, and the claims
from which it depends, have the plain and
4, wherein said loading holder further
has a guiding slot provided at a rear side ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
of said feeding channel, wherein said
striper clip is guided to slide along said column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
guiding slot for ensuring said ammos
the ‘987 Patent, and consistent with
retained in said feeding channel in
dictionary definitions of the claim words.
position.
The claim thus means:
6. A magazine loader, as recited in claim
4, wherein said loading holder further has
a guiding slot provided at a rear side of
said feeding channel, wherein said striper
clip is guided to slide along said guiding
slot for ensuring said ammos retained in
said feeding channel in position.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Carson Cheng, et al. v. AIM Sports, Inc., et al.
7. A magazine loader, as recited in claim
5, wherein said loading holder further
comprises a clip stopper formed within
said guiding slot at said discharging
opening end of said loading holder in
such a manner that when said striper clip
is slid into said guiding slot, the striper
clip is stopped at said clip stopper for
securely holding said ammos within said
feeding channel in position.

Date

April 14, 2011

The elements of this claim, and the claims
from which it depends, have the plain and
ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
The claim thus means:
7. A magazine loader, as recited in claim
5, wherein said loading holder further
comprises a clip stopper formed within
said guiding slot at said discharging
opening end of said loading holder in such
a manner that when said striper clip is slid
into said guiding slot, the striper clip is
stopped at said clip stopper for securely
holding said ammos within said feeding
channel in position.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Carson Cheng, et al. v. AIM Sports, Inc., et al.
8. A magazine loader, as recited in claim
6, wherein said loading holder further
comprises a clip stopper formed within
said guiding slot at said discharging
opening end of said loading holder in
such a manner that when said striper clip
is slid into said guiding slot, the striper
clip is stopped at said clip stopper for
securely holding said ammos within said
feeding channel in position.

Date

April 14, 2011

The elements of this claim, and the claims
from which it depends, have the plain and
ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
The claim thus means:
8. A magazine loader, as recited in claim
6, wherein said loading holder further
comprises a clip stopper formed within
said guiding slot at said discharging
opening end of said loading holder in such
a manner that when said striper clip is slid
into said guiding slot, the striper clip is
stopped at said clip stopper for securely
holding said ammos within said feeding
channel in position.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
9. A magazine loader, as recited in claim The elements of this claim, and the claim
from which it depends, have the plain and
1, wherein said ammo pusher further
ordinary meaning in light of the entire
comprises a pusher platform and an
specification of the ‘987 Patent (especially
elongated pusher body downwardly
column 2, line 66 through column 6, line
extended therefrom while said pusher
head is formed at a bottom end of said 3; and Figures 2-4) and all other claims of
pusher body, wherein said pusher body the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
has a predetermined length that when
said pusher platform is stopped at said The claim thus means:
supplying opening end of said loading
9. A magazine loader, as recited in claim
holder when said pusher head is
positioned at said discharging opening 1, wherein said ammo pusher further
end of said loading holder for ensuring comprises a pusher platform and an
said ammos within feeding channel being elongated pusher body downwardly
extended therefrom while said pusher head
fed in said magazine.
is formed at a bottom end of said pusher
body, wherein said pusher body has a
predetermined length that when said
pusher platform is stopped at said
supplying opening end of said loading
holder when said pusher head is
positioned at said discharging opening end
of said loading holder for ensuring said
ammos within feeding channel being fed
in said magazine.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
10. A magazine loader, as recited in
from which it depends, have the plain and
claim 2, wherein said ammo pusher
further comprises a pusher platform and ordinary meaning in light of the entire
an elongated pusher body downwardly specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
extended therefrom while said pusher
head is formed at a bottom end of said 3; and Figures 2-4) and all other claims of
pusher body, wherein said pusher body the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
has a predetermined length that when
said pusher platform is stopped at said The claim thus means:
supplying opening end of said loading
10. A magazine loader, as recited in claim
holder when said pusher head is
positioned at said discharging opening 2, wherein said ammo pusher further
end of said loading holder for ensuring comprises a pusher platform and an
said ammos within feeding channel being elongated pusher body downwardly
extended therefrom while said pusher head
fed in said magazine.
is formed at a bottom end of said pusher
body, wherein said pusher body has a
predetermined length that when said
pusher platform is stopped at said
supplying opening end of said loading
holder when said pusher head is
positioned at said discharging opening
end of said loading holder for ensuring
said ammos within feeding channel being
fed in said magazine.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
11. A magazine loader, as recited in
from which it depends, have the plain and
claim 4, wherein said ammo pusher
further comprises a pusher platform and ordinary meaning in light of the entire
an elongated pusher body downwardly specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
extended therefrom while said pusher
head is formed at a bottom end of said 3; and Figures 2-4) and all other claims of
pusher body, wherein said pusher body the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
has a predetermined length that when
said pusher platform is stopped at said The claim thus means:
supplying opening end of said loading
11. A magazine loader, as recited in claim
holder when said pusher head is
positioned at said discharging opening 4, wherein said ammo pusher further
end of said loading holder for ensuring comprises a pusher platform and an
said ammos within feeding channel being elongated pusher body downwardly
extended therefrom while said pusher head
fed in said magazine.
is formed at a bottom end of said pusher
body, wherein said pusher body has a
predetermined length that when said
pusher platform is stopped at said
supplying opening end of said loading
holder when said pusher head is
positioned at said discharging opening
end of said loading holder for ensuring
said ammos within feeding channel being
fed in said magazine.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
12. A magazine loader, as recited in
from which it depends, have the plain and
claim 8, wherein said ammo pusher
further comprises a pusher platform and ordinary meaning in light of the entire
an elongated pusher body downwardly specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
extended therefrom while said pusher
head is formed at a bottom end of said 3; and Figures 2-4) and all other claims of
pusher body, wherein said pusher body the ‘987 Patent, and consistent with
dictionary definitions of the claim words.
has a predetermined length that when
said pusher platform is stopped at said The claim thus means:
supplying opening end of said loading
12. A magazine loader, as recited in claim
holder when said pusher head is
positioned at said discharging opening 8, wherein said ammo pusher further
end of said loading holder for ensuring comprises a pusher platform and an
said ammos within feeding channel being elongated pusher body downwardly
extended therefrom while said pusher head
fed in said magazine.
is formed at a bottom end of said pusher
body, wherein said pusher body has a
predetermined length that when said
pusher platform is stopped at said
supplying opening end of said loading
holder when said pusher head is
positioned at said discharging opening
end of said loading holder for ensuring
said ammos within feeding channel being
fed in said magazine.

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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
13. A magazine loader, as recited in
from which it depends, have the plain and
claim 9, wherein said ammo pusher
ordinary meaning in light of the entire
further comprises a clip retraction
element provided at said pusher platform specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
to detachably engage with said striper
clip when said pusher head is slidably 3; and Figures 2-4) and all other claims of
moved at said discharging opening end the ‘987 Patent, and consistent with
of said loading holder, so that when said dictionary definitions of the claim words.
ammo pusher is slidably pulled out from The claim thus means:
said feeding channel, said striper clip is
13. A magazine loader, as recited in claim
automatically pulled out from said
9, wherein said ammo pusher further
loading holder at the same time.
comprises a clip retraction element
provided at said pusher platform to
detachably engage with said striper clip
when said pusher head is slidably moved
at said discharging opening end of said
loading holder, so that when said ammo
pusher is slidably pulled out from said
feeding channel, said striper clip is
automatically pulled out from said loading
holder at the same time.

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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
14. A magazine loader, as recited in
from which it depends, have the plain and
claim 10, wherein said ammo pusher
ordinary meaning in light of the entire
further comprises a clip retraction
element provided at said pusher platform specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
to detachably engage with said striper
clip when said pusher head is slidably 3; and Figures 2-4) and all other claims of
moved at said discharging opening end the ‘987 Patent, and consistent with
of said loading holder, so that when said dictionary definitions of the claim words.
ammo pusher is slidably pulled out from The claim thus means:
said feeding channel, said striper clip is
14. A magazine loader, as recited in claim
automatically pulled out from said
10, wherein said ammo pusher further
loading holder at the same time.
comprises a clip retraction element
provided at said pusher platform to
detachably engage with said striper clip
when said pusher head is slidably moved
at said discharging opening end of said
loading holder, so that when said ammo
pusher is slidably pulled out from said
feeding channel, said striper clip is
automatically pulled out from said loading
holder at the same time.

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UNITED STATES DISTRICT COURT
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CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
15. A magazine loader, as recited in
from which it depends, have the plain and
claim 11, wherein said ammo pusher
ordinary meaning in light of the entire
further comprises a clip retraction
element provided at said pusher platform specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
to detachably engage with said striper
clip when said pusher head is slidably 3; and Figures 2-4) and all other claims of
moved at said discharging opening end the ‘987 Patent, and consistent with
of said loading holder, so that when said dictionary definitions of the claim words.
ammo pusher is slidably pulled out from The claim thus means:
said feeding channel, said striper clip is
15. A magazine loader, as recited in claim
automatically pulled out from said
11, wherein said ammo pusher further
loading holder at the same time.
comprises a clip retraction element
provided at said pusher platform to
detachably engage with said striper clip
when said pusher head is slidably moved
at said discharging opening end of said
loading holder, so that when said ammo
pusher is slidably pulled out from said
feeding channel, said striper clip is
automatically pulled out from said loading
holder at the same time.

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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
16. A magazine loader, as recited in
from which it depends, have the plain and
claim 12, wherein said ammo pusher
ordinary meaning in light of the entire
further comprises a clip retraction
element provided at said pusher platform specification of the ‘987 Patent (especially
column 2, line 66 through column 6, line
to detachably engage with said striper
clip when said pusher head is slidably 3; and Figures 2-4) and all other claims of
moved at said discharging opening end the ‘987 Patent, and consistent with
of said loading holder, so that when said dictionary definitions of the claim words.
ammo pusher is slidably pulled out from The claim thus means:
said feeding channel, said striper clip is
16. A magazine loader, as recited in claim
automatically pulled out from said
12, wherein said ammo pusher further
loading holder at the same time.
comprises a clip retraction element
provided at said pusher platform to
detachably engage with said striper clip
when said pusher head is slidably moved
at said discharging opening end of said
loading holder, so that when said ammo
pusher is slidably pulled out from said
feeding channel, said striper clip is
automatically pulled out from said loading
holder at the same time.

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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
17. A magazine loader, as recited in
from which it depends, have the plain and
claim 13, wherein said clip retraction
element is a magnet mounted at a bottom ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
side of said pusher platform and said
striper clip is made of magnetic attractioncolumn 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
ability material, in such a manner that
the ‘987 Patent, and consistent with
when said ammo pusher is slidably
pushed in said feeding channel until said dictionary definitions of the claim words.
The claim thus means:
pusher head is positioned at said
discharging opening end of said loading
17. A magazine loader, as recited in claim
holder, said clip retraction element is
magnetically engaged with said striper 13, wherein said clip retraction element is
a magnet mounted at a bottom side of said
clip.
pusher platform and said striper clip is
made of magnetic attraction ability
material, in such a manner that when said
ammo pusher is slidably pushed in said
feeding channel until said pusher head is
positioned at said discharging opening end
of said loading holder, said clip retraction
element is magnetically engaged with said
striper clip.

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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
18. A magazine loader, as recited in
from which it depends, have the plain and
claim 14, wherein said clip retraction
element is a magnet mounted at a bottom ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
side of said pusher platform and said
striper clip is made of magnetic attractioncolumn 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
ability material, in such a manner that
the ‘987 Patent, and consistent with
when said ammo pusher is slidably
pushed in said feeding channel until said dictionary definitions of the claim words.
The claim thus means:
pusher head is positioned at said
discharging opening end of said loading
18. A magazine loader, as recited in claim
holder, said clip retraction element is
magnetically engaged with said striper 14, wherein said clip retraction element is
a magnet mounted at a bottom side of said
clip.
pusher platform and said striper clip is
made of magnetic attraction ability
material, in such a manner that when said
ammo pusher is slidably pushed in said
feeding channel until said pusher head is
positioned at said discharging opening end
of said loading holder, said clip retraction
element is magnetically engaged with said
striper clip.

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UNITED STATES DISTRICT COURT
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CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
19. A magazine loader, as recited in
from which it depends, have the plain and
claim 15, wherein said clip retraction
element is a magnet mounted at a bottom ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
side of said pusher platform and said
striper clip is made of magnetic attractioncolumn 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
ability material, in such a manner that
the ‘987 Patent, and consistent with
when said ammo pusher is slidably
pushed in said feeding channel until said dictionary definitions of the claim words.
The claim thus means:
pusher head is positioned at said
discharging opening end of said loading
19. A magazine loader, as recited in claim
holder, said clip retraction element is
magnetically engaged with said striper 15, wherein said clip retraction element is
a magnet mounted at a bottom side of said
clip.
pusher platform and said striper clip is
made of magnetic attraction ability
material, in such a manner that when said
ammo pusher is slidably pushed in said
feeding channel until said pusher head is
positioned at said discharging opening end
of said loading holder, said clip retraction
element is magnetically engaged with said
striper clip.

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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
20. A magazine loader, as recited in
from which it depends, have the plain and
claim 16, wherein said clip retraction
element is a magnet mounted at a bottom ordinary meaning in light of the entire
specification of the ‘987 Patent (especially
side of said pusher platform and said
striper clip is made of magnetic attractioncolumn 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
ability material, in such a manner that
the ‘987 Patent, and consistent with
when said ammo pusher is slidably
pushed in said feeding channel until said dictionary definitions of the claim words.
The claim thus means:
pusher head is positioned at said
discharging opening end of said loading
20. A magazine loader, as recited in claim
holder, said clip retraction element is
magnetically engaged with said striper 16, wherein said clip retraction element is
a magnet mounted at a bottom side of said
clip.
pusher platform and said striper clip is
made of magnetic attraction ability
material, in such a manner that when said
ammo pusher is slidably pushed in said
feeding channel until said pusher head is
positioned at said discharging opening end
of said loading holder, said clip retraction
element is magnetically engaged with said
striper clip.

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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
21. A magazine loader, as recited in
claim 2, wherein said pusher head of said from which it depends, have the plain and
ordinary meaning in light of the entire
ammo pusher has an enlarged bottom
specification of the ‘987 Patent (especially
engaging surface for enlarging a
contacting surface of said pusher with column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
respective to said respective ammo
the ‘987 Patent, and consistent with
within said feeding channel so as to
evenly distribute a pushing force from dictionary definitions of the claim words.
The claim thus means:
said pusher head on said ammos.
21. A magazine loader, as recited in claim
2, wherein said pusher head of said ammo
pusher has an enlarged bottom engaging
surface for enlarging a contacting surface
of said pusher with respective to said
respective ammo within said feeding
channel so as to evenly distribute a
pushing force from said pusher head on
said ammos.
The elements of this claim, and the claims
22. A magazine loader, as recited in
claim 6, wherein said pusher head of said from which it depends, have the plain and
ordinary meaning in light of the entire
ammo pusher has an enlarged bottom
specification of the ‘987 Patent (especially
engaging surface for enlarging a
contacting surface of said pusher with column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
respective to said respective ammo
the ‘987 Patent, and consistent with
within said feeding channel so as to
evenly distribute a pushing force from dictionary definitions of the claim words.
The claim thus means:
said pusher head on said ammos.

CV 10-3814 (04/11)

22. A magazine loader, as recited in claim
6, wherein said pusher head of said ammo
pusher has an enlarged bottom engaging
surface for enlarging a contacting surface
of said pusher with respective to said
respective ammo within said feeding
channel so as to evenly distribute a
pushing force from said pusher head on
said ammos.
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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.
The elements of this claim, and the claims
23. A magazine loader, as recited in
claim 8, wherein said pusher head of said from which it depends, have the plain and
ordinary meaning in light of the entire
ammo pusher has an enlarged bottom
specification of the ‘987 Patent (especially
engaging surface for enlarging a
contacting surface of said pusher with column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
respective to said respective ammo
the ‘987 Patent, and consistent with
within said feeding channel so as to
evenly distribute a pushing force from dictionary definitions of the claim words.
The claim thus means:
said pusher head on said ammos.
23. A magazine loader, as recited in claim
8, wherein said pusher head of said ammo
pusher has an enlarged bottom engaging
surface for enlarging a contacting surface
of said pusher with respective to said
respective ammo within said feeding
channel so as to evenly distribute a
pushing force from said pusher head on
said ammos.
The elements of this claim, and the claims
24. A magazine loader, as recited in
claim 12, wherein said pusher head of from which it depends, have the plain and
ordinary meaning in light of the entire
said ammo pusher has an enlarged
bottom engaging surface for enlarging a specification of the ‘987 Patent (especially
contacting surface of said pusher with column 2, line 66 through column 6, line
3; and Figures 2-4) and all other claims of
respective to said respective ammo
the ‘987 Patent, and consistent with
within said feeding channel so as to
evenly distribute a pushing force from dictionary definitions of the claim words.
The claim thus means:
said pusher head on said ammos.

CV 10-3814 (04/11)

24. A magazine loader, as recited in claim
12, wherein said pusher head of said
ammo pusher has an enlarged bottom
engaging surface for enlarging a
contacting surface of said pusher with
respective to said respective ammo within
said feeding channel so as to evenly
distribute a pushing force from said pusher
head on said ammos.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
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Case No.

CV 10-3814 PSG (PLAx)

Title

Carson Cheng, et al. v. AIM Sports, Inc., et al.

B.

Date

April 14, 2011

The Design Patents

In the Complaint, Plaintiffs allege that Defendants infringed on six design patents. The
Court construes them as follows, after explaining the scope of each patent.
1.

The D555,455 Patent

Design Patent Number D555,455 (the “‘455 Patent”) is directed at a multifunction tool as
illustrated in Image 1:

Plaintiffs assert that the ‘455 Patent covers the following ornamental aspects of the tool:
A.
B.
C.
D.
E.
CV 10-3814 (04/11)

Look, feel, and overall impression of the design;
Overall shape, profiles, and dimensions of the design’
Dimensions, layout, placement, and combination of various components of the
design;
Dimensions, layout, placement, and combination of various components of the
design;
Selection, combination, and placement of tools within the entire design shown in
figures 8-15 [of the Patent]; and
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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Carson Cheng, et al. v. AIM Sports, Inc., et al.
F.

Date

April 14, 2011

Shape and dimensions of tool enclosure shown in all figures.

Pl’s Identification of Claims, Dkt. #89, Ex. 1 at 5-6. Defendants argue that because the
multifunction tool contains individual tools “designed for specific functions and utilities,” the
design of the multifunction tool itself is functional and not protected by the design patent. See
Def.’s Claim Construction Opening Brief at 11:10-15. To support its position, Defendants rely
almost exclusively on Plaintiff New Century’s multifunction tool product manual, which
explains the functionality of each of the included tools. See id. at 6:24-11:15; see also Def.’s
Reply at 8:25-12:10.
Defendants’ position, however, ignores the fact that a design patent can cover a device
with a function. See Stanley Works, Inc., 1046 F. Supp. 2d at 1050-51 (holding that certain
design elements of a multifunction tool were protected by a design patent). Design patent
protection is lost only if the design of the object is “dictated by” its function. L.A. Gear, 988
F.3d at 1123. In this case, the design of the multifunction tool is not dictated by the functions
performed by the individual parts. Before construing the Patent, however, the Court addresses
Defendants arguments.
First, Defendants argue that each of the tools within the multifunction tool have separate
functions. See Def.’s Claim Construction Opening Brief at 6:21-14:17. Plaintiffs concede as
much. See, e.g., Pl’s Response, 5:21-22 (“The Defendants argue that these tools are designed to
mate with a component on a rifle . . . This is true.”). For example, Defendants explain that the
front sight post wrenches are designed to adjust a front sight post, that the rear sight tool is
designed to adjust the rear sight adjuster, that the receiver pin punch assists in “field stripping [a]
rifle,” that the carbon scraper scrapes carbon, that the cleaning brush cleans, that the bolt
assembly pin punch removes various pins on a rifle, that the broken shell extractor extracts
broken shells, that the collapsible stock wrench helps to “remove and install . . . collapsible
stocks”, that the flat-head screwdriver drives screws, and that the housing of the multifunction
tool houses the tools and is not ornamental. Def.’s Claim Construction Opening Brief at 6:2411:15.
Plaintiffs, on the other hand, offer evidence that each of the individual tools within the
multifunction tool could have been designed differently with no adverse affect on the utility of
the whole and its component parts. First, Plaintiffs point to Defendants’ own examples of tools
capable of performing the same tasks as the tools in the multifunction tool, but which have
different designs. See Chin Decl. ¶ 11 (identifying an alternative design for a sight post
wrench); Chin Decl. ¶ 13 (alternatively designed sight tool); Chin Decl. ¶ 17 (Defense expert
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UNITED STATES DISTRICT COURT
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Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

testifying that instead of a using a bolt punch assembly, a person could use “[a]nything of proper
size . . . for example, the tip of a bullet”); Chin Decl. ¶ 18 (alternatively designed broken shell
extractor); Chin Decl. ¶ 19 (alternatively designed wrench). Plaintiffs’ expert then confirms that
each of the tools could have been designed differently while maintaining the same degree of
functionality. See Nixon Decl. ¶¶ 14-21. Moreover, Plaintiffs identify a commercially available
multifunction tool that contains many of the same individual tools, but looks “very different.”
See Pl’s Response at 13:15-14:6 (“The patented tool looks like a mobile flip phone when closed
and opens like a clam shell, while the other tool looks like a pocket knife”); see also Nixon Decl.
¶ 11. This particular evidence shows that the design of the housing of Plaintiffs’ multifunction
tool is not dictated by function and can be altered while maintaining utility. Thus, the designs
of the tools within the multifunction tool and the design of the multifunction tool itself are not
“dictated by the use or purpose of the article” and can be altered without adversely affecting the
article’s utility See Rosco, 304 F.3d at 1378.
Nevertheless, the Court finds that the design feature of having to remove the various
individual tools from the housing of the multifunction tool in order to make use of each
individual tool is “dictated by the use or purpose of the article” and is not covered by the ‘455
design patent. The functional aspect of such a design is made even more clear when compared
with the alternative, commercially available multifunction tool that resembles a pocketknife,
which Plaintiffs identify. See Pl’s Response at 13:15-14:6 (a multifunction tool that apparently
operates by removing each individual tool from the housing before use of that particular tool).
With the above in mind, the Court construes the ‘455 Patent as a multifunction tool as
shown in figures 1-15 of the ‘455 Patent, but limits the ‘455 Patent to exclude the design feature
of having to remove the individual tools from the housing of the multifunction tool.
2.

The D598,723 Patent

Design Patent Number D598,723 is a multifunction wrench as shown in Image 2:

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Case No.

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Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

Defendants again claim that because the tool is functional, it cannot be protected by a
design patent as ornamental. See Def.’s Reply 13:26. While the multifunction wrench’s mere
status as a functional tool does not render it unprotected, the Court nevertheless concludes that
the design of the multifunction wrench is likely dictated by its function.
Defendants argue that Plaintiffs’ article covered by the ‘723 Patent is an exact copy of
prior art, Patent Number D548,552, but with the addition of a “castle nut wrench.” See Def.’s
Reply 12:12-13:26; First Stahl Decl., Ex. K (the ‘552 Patent). The Court agrees that the close
resemblance of the patented article in this case to the prior art suggests that design is indeed
dictated by function. See L.A. Gear, Inc., 988 F.2d at 1123. Moreover, while Plaintiffs argue
that the various components of the multifunction wrench could be moved to other locations, see
Pl.’s Response at 15:10-16:16; Nixon Decl. ¶¶ 22-24, there is no indication that moving the
components of the wrench would not affect the tools utility, see L.A. Gear, Inc., 988 F.2d at
1123; see also PHG Technologies, LLC v. St. John Companies, Inc., 469 F.3d 1361, 1367 (Fed.
Cir. 2006). In fact, Plaintiffs’ expert confirmed that by moving the various wrenches to different
locations on the tool would likely affect a user’s ability to generate torque, thus affecting the
tool’s usefulness. Nixon Depo. 127:19-128:9, Second Stahl Decl., Ex. E, p. 67-68 (“I mean, it’s
true that the longer that is the less force the user would have to apply to – to generate a given
torque.”). Plaintiffs argument that the layout of the multifunction wrench can be adjusted, and
thus the tool is protected by a design patent, is contrary to both the substantially similar prior art
and Plaintiffs’ experts’ own testimony. As a result, the Court is left to conclude that the design
of the article depicted in the ‘455 Patent is largely functional, not ornamental.
3.

Weaver Rails and Picatinny Rails

Design Patent Number D542,880 (the “‘880 Patent”) and the remaining design patents to
be construed depict articles known as “Weaver rails,” which are similar to “Picatinny rails.”
Such rails “are mounting platforms used on firearms to connect accessories such as scopes,
tactical lights, and other accessories to the firearm.” Nixon Decl. ¶ 25; see also Chin Decl. ¶ 37.
Defendants’ arguments as to why the various rails are functional and not ornamental apply to all
the remaining patents, and the Court considers them together before construing the Patents
separately.
Once again, Defendants insist that because ‘880, ‘750, ‘751, and ‘605 Patents all depict
articles that enable a user to attach accessories to a firearm, the designs are functional and thus
outside the scope of a design patent. See Def.’s Claim Construction Opening Brief at 18:11-12
(“the Patent[s are] directed at a mount that w[ere] designed based on functional criteria,” not
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Case No.

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Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

ornamental criteria). The Court agrees that the articles are functional, but disagrees that function
dictated the designs of the articles.
Defendants’ expert stated that because “[c]ompatibility of accessories with rifles is of
particular concern for law enforcement and military . . . a government standard called MIL-STD1913 was set” for Picatinny rails to ensure maximum compatibility. Chin Decl. ¶ 40. This
standard requires that the grooves that enable accessory mounting be set with certain spacing and
have a certain width. See id. ¶ 41. Other than those requirements, however, Defendants do not
argue nor suggest that there are any other design elements of a Weaver or Picatinny rail that are
dictated by their purpose.
Plaintiffs do not dispute the applicable spacing and width standards, but do insist that
virtually all of the other design aspects of the articles covered by the remaining design patents
are purely ornamental. For example, Plaintiffs provide examples of other rails that use a rib
design—where the mounting elements extend across the entire width of the rail—whereas the
patented articles use teeth, or two distinct rows of mounting elements with a space in the middle.
See, e.g., Nixon Decl. ¶¶ 31-35. Plaintiffs note that the rail patents in this case concern only
Weaver rails, and provide evidence indicating that Weaver rails are distinct from Picatinny rails.
See id. ¶¶ 27, 30 (“None of the rails depicted in the diagrams in the patents in this suit could be
mistaken for Picatinny rails because they all have teeth instead of ribs, and no dimensions are
specified. Additionally, the patents are entitled ‘Weaver rail.’”). Plaintiffs identify that the only
requirement for a Weaver rail is that it have a “recoil grove to be .180 inches wide.” Id. ¶ 27, ¶
34 (indicating that both Picatinny rails and Weaver rails have rails, but the rails here have teeth
and the spacing of the teeth, the “shape of the teeth and the height of the teeth . . . [are] not
required” to be uniform). Based on this, the Court concludes that the design of each rail’s
“recoil grove” is dictated by necessity and cannot be covered by the design patents. The
remaining design elements, however, are protected by the rail patents, as described below.
i.

The D542,880 Patent

Plaintiffs assert that the ‘880 Patent covers the following ornamental aspects of the
Weaver rail, as shown in Image 3 below:
A.
B.
C.
CV 10-3814 (04/11)

Look, feel, and overall impression of the design;
Overall shape, profiles, and dimensions of the design;
Dimensions, layout, placement, and combination of various components of the
design;
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O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Carson Cheng, et al. v. AIM Sports, Inc., et al.
D.
E.
F.
G.
H.
I.
J.
K.
L.
M.

Date

April 14, 2011

Number, size, and types of screws and holes shown in figures 1-3, 6, and 7;
Number, shape, and arrangement of teeth along top of rail design shown in figures
1-3 and 6;
Shape and configuration of closed center channel shown in figures 1, 4, and 5;
Shape and slope of side walls shown in figures 1, 4, and 5;
Grooves adapted for attachment plates shown in all figures;
Number and shape of attachment plates shown in all figures;
Number and shape of rectangular ridges perpendicular to length of the design
shown in figure 7;
Number and shape of rectangular ridges parallel to length of the design shown in
figure 7;
Shape and configuration of open side channel shown in figures 1, 4, and 5; and
Shape and configuration of attachment adapted for open side channel shown in
figures 1, 4, and 5.

Pl’s Identification of Claims, Dkt. #89, Ex. 1 at 2-3.
Image 3:

Consistent with the above discussion, the Court construes the D542,880 Patent as follows:
a Weaver Rail as depicted in figures 1-7 of the ‘880 Patent.
ii.

CV 10-3814 (04/11)

The D555,750 Patent

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Page 32 of 36

O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

Plaintiffs assert that the ‘750 Patent covers the following ornamental aspects of the
Weaver rail, as shown in Image 4, below:
A.
B.
C.
D.
E.
F.
G.
H.
I.
J.
K.
L.

Look, feel, and overall impression of the design;
Overall shape, profiles, and dimensions of the design;
Dimensions, layout, placement, and combination of various components of the
design;
Number, size, and types of screws and holes shown in figures 1-3, 6, and 7;
Number, shape, and arrangement of teeth along top of rail design shown in figures
1-3 and 6;
Shape and configuration of closed center channel shown in figures 1, 4, and 5;
Shape and slope of side walls shown in figures 1, 4, and 5;
Grooves adapted for attachment plates shown in all figures;
Number and shape of attachment plates shown in all figures;
Number and shape of rectangular ridges parallel to length of the design shown in
figure 7;
Shape and configuration of open side channel shown in figures 1, 4, and 5; and
Placement and shape of bolt and screw shown in figures 2-5 and 7.

Pl’s Identification of Claims, Dkt. #89, Ex. 1 at 4.
Image 4:

CV 10-3814 (04/11)

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Page 33 of 36

O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

Consistent with the above discussion, the Court construes the D555,750 Patent as follows:
a Weaver Rail with two distinct rows of teeth and a concave, solid connecting surface, as
depicted in figures 1-7 of the ‘750 Patent.
iii.

The D555,751 Patent

Plaintiffs assert that the ‘751 Patent covers the following ornamental aspects of the
Weaver rail, as shown in Image 5, below:
A.
B.
C.
D.
E.
F.
G.
H.
I.

Look, feel, and overall impression of the design;
Overall shape, profiles, and dimensions of the design;
Dimensions, layout, placement, and combination of various components of the
design;
Number, size, and types of screws and holes shown in all figures;
Number, shape, and arrangement of teeth along top of rail design shown in figures
1-6;
Shape and configuration of open center channel shown in figures 1, and 4-6;
Grooves adapted for attachment plates shown in figures 1-6;
Number and shape of attachment plates shown in figures 1, 2, and 4-7; and
Shape and dimensions of rectangular protrusion preceding rail shown in figures 13 and 6.

Pl’s Corrected Identification of Claims, Dkt. #95, Ex. 1 at 5.

Image 5:

CV 10-3814 (04/11)

CIVIL MINUTES - GENERAL

Page 34 of 36

O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

Nevertheless, consistent with the above discussion, the Court construes the D555,751
Patent as follows: a Weaver Rail as depicted in figures 1-7 of the ‘751 Patent.
iv.

The D543,605 Patent

Plaintiffs assert that the ‘605 Patent covers the following ornamental aspects of the Weaver rail,
as shown in Image 6, below:
A.
B.
C.
D.
E.
F.
G.
H.
I.

Look, feel, and overall impression of the design;
Overall shape, profiles, and dimensions of the design;
Dimensions, layout, placement, and combination of various components of the
design;
Number, size, and types of screws and holes shown in all figures;
Number, shape, and arrangement of teeth along top of rail design shown in figures
1-6;
Shape and configuration of closed center channel shown in figures 1, 4, and 5;
Shape and slope of side walls shown in figures 1, 4, and 5;
Grooves adapted for attachment plates shown in figures 1-6; and
Number and shape of attachment plates shown in all figures;

Pl’s Identification of Claims, Dkt. #89, Ex. 1 at 2-3.
CV 10-3814 (04/11)

CIVIL MINUTES - GENERAL

Page 35 of 36

O
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
CIVIL MINUTES - GENERAL
Case No.

CV 10-3814 PSG (PLAx)

Title

Date

April 14, 2011

Carson Cheng, et al. v. AIM Sports, Inc., et al.

Image 6:

Consistent with the above discussion, the Court construes the D543,605 Patent as follows:
a Weaver Rail consisting of two distinct rows of teeth with a flat, rather than concave or convex
connecting surface between the top and side walls, as depicted in figures 1-7 of the ‘605 Patent.

IV.

Conclusion
The Court construes the Patents at issue as indicated above.
IT IS SO ORDERED.

CV 10-3814 (04/11)

CIVIL MINUTES - GENERAL

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