Patent Holder, LLC. v. Lone Wolf Distributors, Inc et al
Filing
62
MEMORANDUM DECISION AND ORDER - The Court construes the disputed claims as follows: 1. Guide Lip guide angle 224. 2. Control Tab said control tab protrudes, extends or projects outwardly or away from the adjacent or surrounding surface structure o f the first connector leg and parallel to the axis of the first connector leg. 3. Force As written in the patent. Signed by Judge David C. Nye. (caused to be mailed to non Registered Participants at the addresses listed on the Notice of Electronic Filing (NEF) by (cjs)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF IDAHO
PATENT HOLDER, LLC,
Case No. 2:17-cv-00452-DCN
Plaintiff,
v.
LONE WOLF DISTRIBUTORS, INC.
and LONE WOLF R&D, LLC,
MEMORANDUM DECISION AND
ORDER
Defendants.
I. INTRODUCTION
The Court held a Markman hearing on August 21, 2018, to interpret the claims of
Plaintiff Patent Holder, LLC’s (“Patent Holder”) patent (United States Patent No.
9,062,700 (“‘700 patent”)). The Court’s interpretation is set forth below.
II. BACKGROUND
A. Procedural Background
On August 11, 2017, Patent Holder filed suit against Defendants Lone Wolf
Distributors, Inc, and Lone Wolf R&D, LLC (collectively “Lone Wolf”). In this suit,
Patent Holder seeks damages and a permanent injunction against Lone Wolf for
infringement of its ‘700 patent. Patent Holder alleges that Lone Wolf manufactures
products which are covered by one of more claims and designs of the ‘700 patent. Lone
MEMORANDUM DECISION AND ORDER - 1
Wolf denies infringement. The Court now engages in the first step of the two-part
infringement analysis: claim construction.
B. Patent at Issue
The sole patent at issue in this case is the ‘700 patent. The ‘700 patent discloses “a
firearm enhanced trigger control connector.” Dkt. 43-2, at 1, abstract. In layman’s terms,
the ‘700 patent covers an after-market firearm part that when placed in a handgun
shortens the distance that the trigger must travel to discharge the firearm. Said differently,
with such a product installed, the space from where a person begins to pull, or squeeze,
the trigger, and the point at which the trigger actually engages the firing pin is shortened.
The purpose of this device is to increase precision and accuracy in shooting.
III. LEGAL STANDARD
The Court engages here in the first step of the two-step infringement analysis—
determining the scope and meaning of the patent claims at issue. See Markman v.
Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370,
(1996). The construction of a patent is a matter of law for the Court to decide. Id.; see
also O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
2008) (“When the parties present a fundamental dispute regarding the scope of a claim
term, it is the court’s duty to resolve it.”). At the same time, the Court is not required to
construe every limitation present in a patent’s asserted claims. O2 Micro Int’l Ltd, 521
F.3d at 1359. “In some cases, the ordinary meaning of claim language . . . may be readily
apparent even to lay judges, and claim construction in such cases involves little more
MEMORANDUM DECISION AND ORDER - 2
than the application of the widely accepted meaning of commonly understood words.”
Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed.Cir.2005) (en banc).
To interpret the claims, the Court must look first to the intrinsic evidence of
record, i.e., the patent itself, including the claims, the specification and, if in evidence, the
prosecution history. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996). Such intrinsic evidence is the most significant source of the legally operative
meaning of disputed claim language. Id.
In evaluating the intrinsic evidence, the Court examines first the words of the
claims themselves, both asserted and nonasserted, to define the scope of the patented
invention. Id. Although words in a claim are generally given their ordinary and
customary meaning, a patentee may choose to be his own lexicographer and use terms in
a manner other than their ordinary meaning if the special definition of the term is clearly
stated in the patent specification or file history. Id.
Intrinsic evidence also includes the prosecution history of the patent, if in
evidence, which includes the complete record of all the proceedings before the Patent and
Trademark Office (PTO), including any express representations made by the applicant
regarding the scope of the claims. As such, the record before the PTO is often of critical
significance in determining the meaning of the claims. Included within an analysis of the
file history may be an examination of the prior art cited therein. Id.
In most situations, an analysis of the intrinsic evidence alone will resolve any
ambiguity in a disputed claim term. In such circumstances, it is improper to rely on
extrinsic evidence.
MEMORANDUM DECISION AND ORDER - 3
IV. ANALYSIS
At issue here are two phrases in Claim 1, and one phrase in Claim 8 of the ‘700
patent. While there are slight nuances between the parties’ proposed constructions,
broadly speaking, Patent Holder alleges that the Court should construe each disputed
phrase by its plain and ordinary meaning with limited alterations, or simply leave each as
written. Lone Wolf, on the other hand, asserts that each phrase is invalid for
indefiniteness. Alternatively, Lone Wolf’s proposed construction of each disputed term
seeks to clarify areas it believes are—as currently drafted—impermissibly vague and
must be altered in order to aid a jury in determining infringement. The Court will address
each disputed claim in turn.
As a threshold matter, however, the Court must discuss the principle of
indefiniteness as it is Lone Wolf’s main argument in this case.
Challenges of indefiniteness are often determined at summary judgment rather
than claim construction; however, this is not a hard and fast rule. Whether to decide the
issue of invalidity based on indefiniteness at the claim construction stage depends on the
circumstances and claims at issue in a given case.
The Federal Circuit has made clear that indefiniteness is a legal question that
district courts may decide prior to trial. Personalized Media Commc'ns, LLC v. Int’l
Trade Comm’n, 161 F.3d 696, 705 (Fed. Cir. 1998) (“A determination of claim
indefiniteness is a legal conclusion that is drawn from the court’s performance of its duty
as the construer of patent claims.”). Whether that occurs at claim construction or
summary judgment is a matter within a court’s discretion. See e.g. Indus. Tech. Research
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Inst. v. LG Elecs. Inc., No. 3:13-CV-02016-GPC, 2014 WL 6907449, at *3 (S.D. Cal.
Dec. 8, 2014) (holding that a District Court “has discretion as to when to determine
indefiniteness during patent case proceedings”). Other courts in this Circuit have
recognized that “it is appropriate for [district courts] to address indefiniteness issues at
the claim construction stage.” Eon Corp. IP Holdings LLC v. Aruba Networks Inc., 2014
WL 938511, at *3 (N. D. Cal. Mar. 5, 2015); see also Brandywine Commc’ns Techs.,
LLC v. AT & T Corp., No. C 12-2494 CW, 2014 WL 1569544, at *13 (N. D. Cal. Apr.
18, 2014).
Of the three disputed claims in this case, Lone Wolf claims that all three are
indefinite. Frankly, if the Court decided not to take up indefiniteness now, the Court
would not rule on any of the issues and reopen the exact same discussion at summary
judgment. Furthermore, the parties have begun briefing summary judgment—albeit on a
slightly different basis—and requiring them to “re-brief” these issues would be
redundant. In the interest of judicial economy and efficiency, the Court will take up
indefiniteness at this time.
The same principles that generally govern claim construction are applicable to
determining whether allegedly indefinite claim language is subject to construction.
Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008). Section 112(b) of the
Patent Act governs definiteness. This section requires inventor(s) to provide “one or more
claims particularly pointing out and distinctly claiming the subject matter which the
inventor or a joint inventor regards as the invention.” 35 USCS 112(b). Issued U.S.
patents are presumed definite. 35 U.S.C. § 282. Definiteness challengers, like Lone Wolf,
MEMORANDUM DECISION AND ORDER - 5
bear the burden to prove indefiniteness by the heightened standard of clear and
convincing evidence. Id.
As the Supreme Court noted in Nautilus II, all patent claims suffer from “the
inherent limitations of language,” and, thus, definiteness requires only that claims “be
precise enough to afford clear notice of what is claimed.” 134 S. Ct. at 2128–29. This
balance allows “[s]ome modicum of uncertainty” to “ensur[e] the appropriate incentives
for innovation,” while providing a “meaningful definiteness check” to prevent inventors
from purposefully “inject[ing] ambiguity into their claims.” Id. (quotations omitted).
Thus, “a patent is invalid for indefiniteness if its claims, read in light of the specification
delineating the patent, and the prosecution history, fail to inform, with reasonable
certainty, those skilled in the art about the scope of the invention.” Nautilus II, 134 S. Ct.
at 2124.
As the Federal Circuit noted in Halliburton Energy Servs., Inc. v. M-I LLC:
Because claims delineate the patentee’s right to exclude, the patent statute
requires that the scope of the claims be sufficiently definite to inform the
public of the bounds of the protected invention, i.e., what subject matter is
covered by the exclusive rights of the patent. Otherwise, competitors cannot
avoid infringement, defeating the public notice function of patent claims.
514 F.3d 1244, 1249 (Fed. Cir. 2008). The Supreme Court has also explained that a
patent does not satisfy the definiteness requirement of section 112 merely because “a
court can ascribe some meaning to a patent’s claims.” Nautilus II, 134 S. Ct. at 2130; see
also n. 8 (indicating that there is an indefiniteness problem if the claim language “might
mean several different things and ‘no informed and confident choice is available among
MEMORANDUM DECISION AND ORDER - 6
the contending definitions’”) (quoting Every Penny Counts, Inc. v. Wells Fargo Bank,
N.A., 4 F.Supp.3d 1286, 1291, 2014 WL 869092, at *4 (M. D. Fla. Mar. 5, 2014)).
The Court turns next to the disputed claims and will discuss invalidity as to each,
as well as the parties proposed constructions.
1. Guide Lip
The first disputed term—“guide lip”—is found in Claim 1 as follows: “A firearm
enhancing trigger control connector, consisting essentially of: a torso comprising a guide
lip positioned at a first predetermined angle approximately between 68 degrees and 78
degrees with respect to said torso, said guide lip containing a trigger bar of a firearm . . .
.” Dkt 43-2, at 4:53-57 (emphasis added). The guide lip is depicted as “224” in the
figures below from the ‘700 patent. The purpose of this guide lip is to restrain the trigger
bar of the firearm (as depicted in figure 4a below).
MEMORANDUM DECISION AND ORDER - 7
Lone Wolf argues that this term is indefinite because the term is never defined in
the specifications of the patent, but only listed in the claims. Patent Holder counters that a
specific definition is unnecessary considering the explanations of the prior art.
In the ‘700 patent’s “Description of the Preferred Embodiment” section there are
numerous references to former trigger control mechanisms and the “lip” feature that
served the same purpose as the “guide lip” does in the ‘700 patent. See e.g. Dkt. 43-2, at
2:54-57, 3:4-6. Importantly, the ‘700 patent remedied a problem created by the lip in the
prior art. The lip in the prior art was positioned at a 90-degree angle which caused an
obstruction when a user pulled the trigger. By altering the degree of the lip (to between
68 and 78 degrees) Patent Holder eliminated this issue. Patent Holder alleges that,
because these references make abundantly clear what the guide lip is, the term is not
indefinite. The Court agrees.
The Supreme Court has explained that a claim is indefinite if it does not “afford
clear notice of what is claimed,” Nautilus II, 134 S. Ct. at 2128, and “might mean several
different things and no informed and confident choice is available,” Id. at 2130, n.8
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(internal citation and quotations marks omitted). Even though “guide lip” is not defined
in the specifications, there is an “informed and confident choice” available that clearly
recognizes the guide lip as the angle 224 in the specifications and drawings of the ‘700
patent. Although “guide lip” in isolation appears somewhat vague, the intrinsic record—
the explanations and figures in the ‘700 patent—make clear that this is the feature
depicted as “224.” A patent is presumed valid, 35 U.S.C. § 282(a), and a simple reading
of the ‘700 patent clears up any confusion concerning the guide lip. The Court therefore
finds that “guide lip” is not invalid for indefiniteness.
Indefiniteness aside, both parties submit proposed definitions of “guide lip” for the
Court’s consideration. Patent Holder proposes that the Court construe “guide lip” as “the
ridge extending up near the rear end of the torso.” This definition, however, creates more
confusion than clarity. Like “lip,” none of the proposed words are explicitly defined. In
particular, the word “up” is somewhat ambiguous and misleading. It would be difficult
for a third party to interpret the word “up” when many surfaces—224, 228, and 226—
appear to be “up” from the end of the torso. Possibly a word such as “out,” “protruding,”
or “perpendicular” would have been better to describe the direction and angle of the lip,1
but ultimately it would be easier to just use the drawing itself. This is Lone Wolf’s
1
Patent Holder submits a definition from Merriam-Webster’s dictionary of lip as “a projecting
edge.” While this definition comes a little closer, a “projecting edge” extending “up” still does
not provide the clarity gained by simply referencing the figures in the ‘700 patent.
MEMORANDUM DECISION AND ORDER - 9
alternate proposed construction (submitted in the event the Court did not find
indefiniteness).
In an abundance of clarity—and because both sides appear to agree—the Court
will accept Lone Wolf’s alternate proposed construction and define “guide lip” as “the
guide angle 224.”
2. Control Tab
Claim 1 explains that “extending from said first connector leg is a control tab, said
control tab extends along a same axis from said first connector leg . . ..” Dkt. 43-2, at
4:61-64 (emphasis added to indicate disputed language). The parties agree that control
tab should be defined by its plain meaning as “[a] short protruding structure which
projects or extends outwardly or away from the adjacent or surrounding surface structure
of the first connector leg,” and that first connector leg should be defined by its plain
meaning as “a first leg or branch of a trigger connector.” Although the parties agree on
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these definitions in isolation, they disagree that these same general definitions should
apply to this phrase as a whole. Patent Holder asserts that the definition is sound because
the parties agree to the definition of control tab and connector leg. Lone Wolf, on the
other hand, contends that the word “axis” is not defined anywhere and renders the claim
invalid for indefiniteness regardless of the fact that the parties agree on other components
within the phrase. Alternatively, Lone Wolf proposes a construction of the phrase that
more closely aligns with the other definitions already agreed to.
Using Figure 3 of the ‘700 patent as an example, Lone Wolf has labeled the
various parts with a word description. At issue here, is the item depicted as 230.
In layman’s terms, the dispute is whether item 230 must project outwardly from
the connector leg as a separate structure—as is shown in Figure 3 above—or if the
connector leg and control tab can be one in the same (i.e. a single plane or surface with
no visible projection).
Patent Holder claims that the first connector leg and the control tab are essentially
one component that, in the end, serves two purposes. In other words, Patent Holder’s
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position is that the top part of the leg (226) is the control tab (230), and a separate,
distinct protrusion is not necessary under the specifications of the ‘700 patent. Patent
Holder also disagrees with Lone Wolf’s assertion that “axis” is indefinite or difficult to
understand. The design of the ‘700 patent—specifically the metal that makes up the torso,
the leg, and the tab—is one unified piece and consequently all features are aligned, or
situated, along the same axis. See Dkt. 43-2, at 4:37-43. According to Patent Holder, this
is precisely why the term “same axis” is used—they are all the same piece, and exist on
the same plane and axis.
Lone Wolf first asserts that the axis is indefinite because there is no directional
component. Because a three-dimensional object has multiple planes, there are multiple
axes—in symmetry with the design and shape of the object itself—and without some
directional language, there is no way to know what axis the ‘700 patent is referring to.
Second, Lone Wolf contends that the two features must be separate—i.e. that the control
tab (230) must protrude outward from the connector leg (226) as a separate feature.
The Court understands Lone Wolf’s axis argument. Exact specifications and
details are usually more helpful than not. That being said, the plain language that the tab
extends along the “same axis from the connector leg” makes clear that the tab is
positioned along the same plane as the leg itself. There is nothing in the intrinsic record,
or elsewhere, to support an “alternate axis” theory. The Court finds that the disputed
phrase is not invalid for indefiniteness. Even if the claim is not indefinite, however, the
Court must determine whether additional interpretation is necessary to aid a jury in
understanding the phrase at issue.
MEMORANDUM DECISION AND ORDER - 12
Some of the figures submitted by Plaintiff in its Complaint show a product that has
a single plane or surface that—presumably—comprises both the connector leg and the
control tab. Other figures, however—including those within the ‘700 patent itself, such as
Figure 3 above—clearly show a protrusion. Almost exclusively, when the term “control
tab” is described in the ‘700 patent, it is said to: “extend[] from the first connector leg.”
See e.g., Dkt. 43-2, at 1:50-51; 3:30-31. This language—from the patent itself—appears
to conclusively determine that the control tab is separate from the connector leg.
The Court must admit some confusion as to Patent Holder’s position on this issue.
Lone Wolf asserts that Patent Holder’s position is that the first connector leg is also the
control tab and in some instances Patent Holder does appear to take that position.
Importantly, however, Patent Holder’s own proposed construction is that the control tab
“extends or projects” from the first connector leg. Thus, if it is—or ever was—Patent
Holder’s position that the two are a single element, Patent Holder’s own proposed
construction is not necessarily consistent with such an argument. Some of the confusion
may be attributable to the fact that this case was originally filed in another district by
attorneys no longer involved in the case, but ultimately this discrepancy is of little
consequence. At oral argument, Patent Holder agreed that Lone Wolf’s proposed
construction was an acceptable definition. While the party’s definitions are quite similar,
Lone Wolf’s additions more closely align with the already agreed upon definition of
control tab and first connector leg.
Accordingly, the Court accepts Lone Wolf’s proposed construction and construes
control tab as follows: “said control tab protrudes, extends or projects outwardly or away
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from the adjacent or surrounding surface structure of the first connector leg and parallel
to the axis of the first connector leg.”
3. Force
The final disputed claim is best read in context. Claim 8 of the ‘700 patent claims
“the firearm enhancing trigger control connector set forth in claim 7, further
characterized in that said no obstruction is achieved with said first predetermined able for
said guide lip, saving a user from exerting a second force after exerting an initial
force to pull said trigger.” Dkt. 43-2, at 5:24-28 (emphasis added to indicate disputed
language). It is helpful to refer back to Claim 7 to understand the “said no obstruction”
language of Claim 8. Claim 7 reads, in part, “further characterized in that as a trigger is
pulled, said trigger bar slidably travels generally in a rearward and downward direction
and said guide lip serves to guide a curved end of said trigger bar with no obstruction.”
Id. at 5:19-23.
As the Court previously noted, in the prior art, the guide lip of the enhanced
trigger control mechanism was positioned at a 90-degree angle. Thus, when a user pulled
the trigger, depending on the shape of the gun’s trigger bar—whether straight or angled—
this lip might prove to be an obstruction and the user would have to essentially pull
harder to “move past” the obstruction in order to discharge the weapon. The guide lip in
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the ‘700 patent’s design, however, is angled, thus enabling a single pulling action2
without obstruction.
Lone Wolf asserts that Patent Holder does not define “force” anywhere in the
patent. Because there are no terms of magnitude or distance to help a user understand
what constitutes a force—nor any description of when the initial force is complete and
the second force begins—Lone Wolf asserts that this term is invalid. Lone Wolf would
like to see exact measurements (such as 1/16th of an inch for example) in order to know
when the initial force ends, and the second force begins.
Patent Holder claims that Lone Wolf is overcomplicating the issue. According to
Patent Holder, not only is the plain language easy to understand, but this whole process is
described in the preferred embodiment of the patent itself, which describes:
As trigger T is pulled, trigger bar TB slidably travels generally in a rearward
and downward direction and guide angle 224 serves to guide curved end 50
with no obstruction. The no obstruction is achieved with predetermined angle
B for guide angle 24, saving the user from exerting a second force after
exerting an initial force to pull trigger T.
Dkt. 43-2, at 3:52-58. Under the circumstances, the Court must agree. Lone
Wolf’s argument complicates something that does not need further explanation.
2
It should be noted that there was technically never a “second” pull in the sense that a person
would pull once, release, and then pull again. The second pull (or force) was part of the same
finger motion. If the lip was obstructing the trigger pull, however, a person would have to use
increased force to overcome this obstacle—i.e. the “second force.”
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Notably, in this case, adding specifics might only confuse the issue further.
Lone Wolf appears to recognize this3 and yet alleges the claim is indefinite
because Patent Holder did not delineate when the initial force ends, and the second
force begins. Depending on the size and caliber of the gun in question, the
physical strength of the person pulling the trigger, and other external forces—such
as temperature—the force required could vary, as could the exact moments when
the “initial” force and “secondary” force begin. Trying to strictly define the forces
appears more problematic than simply leaving the term as written.
The Court is not persuaded by Lone Wolf’s indefinite assertion, particularly where
no specific evidence has been presented in support. One of the main purposes of the ‘700
patent—as outlined in the patent itself—is to alleviate the obstruction that sometimes
occurred in the prior art as a result of the 90-degree guide lip. There is no need to
disseminate, in measurements, the exact force(s) that were previously required to move
past the obstruction. Claim 8 embodies the product that makes it possible to use a single
unified force to pull the trigger. No more, no less. There is no need to further define this
term.
V. ORDER
The Court construes the disputed claims as follows:
1.
Guide Lip – “guide angle 224.”
3
“With springs, angles and the like all inherent in a trigger pull, there is a variance in the forces
encountered through the trigger pull.” Dkt. 43, at 19 (emphasis added).
MEMORANDUM DECISION AND ORDER - 16
2.
Control Tab – “said control tab protrudes, extends or projects outwardly or
away from the adjacent or surrounding surface structure of the first
connector leg and parallel to the axis of the first connector leg.”
3.
Force – As written in the patent.
DATED: September 27, 2018
_________________________
David C. Nye
U.S. District Court Judge
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