Sig Sauer Inc. et al v. Freed Designs, Inc.

Filing 58

ORDER re: 47 Patent-Claim Construction Responsive Brief, 48 Patent-Claim Construction Responsive Brief. So Ordered by Judge Steven J. McAuliffe.(jbw)

UNITED STATES DISTRICT COURT
DISTRICT OF NEW HAMPSHIRE

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

Case No. 14-cv-461-SM
Opinion No. 2016 DNH 096

Freed Designs, Inc.,
Defendant

O R D E R

The parties propose differing constructions of the
following terms as used in the ‘764 patent at issue 1:

“shoulder”

and “bottom shoulder.”

The patent protects the invention of a grip extender for
handguns.

The grip extender attaches to, and facilitates the

convenient use of, longer magazines in a handgun by providing a
continuous and comfortable hand grip.

Oversimplified perhaps,

but it is enough, for current purposes, to say that the
invention operates in the following way.

A magazine slides

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

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United States Patent No. 6,928,764.
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magazine’s floor plate compresses pliable vertical “ribs” along
the inner surface of the extender until the floor plate clears
those ribs, at which point the bottom of the floor plate comes
to rest on a “tang,” while the bottom of the “ribs” expand back
over the top of the floor plate, thereby securing the magazine
in the extender by means of the opposing pressure between the
ribs and tang.

The terms at issue are used in the following

context in Claim 1:

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

The functional description in Claim 1 seems unambiguous and
is easily understood.

The ribs and tangs hold the magazine

flange securely between them, thereby stabilizing and securing
the extender to the magazine.

It is equally clear that the term

“bottom shoulder” is used in direct reference to the “ribs” to
describe the bottom end of the ribs that engage the upper part
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of the flange.

(I use “flange” as a common English word easily

understood as an equivalent but less cumbersome means of
expressing “a floor plate, of determinable thickness, with a
lower surface and an upper surface, with said floor plate also
having a peripheral surface larger than a peripheral surface of
a corresponding body of the magazine.”)

But what does the phrase “bottom shoulder” of the ribs
mean, as it is used in the patent?

Or, more correctly, what

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

Neither party deemed it useful to offer the opinion of a

person of ordinary skill in a pertinent art, though they were
given that opportunity at the claim construction hearing.

Both

counsel are content to rest on the papers filed.

It is well-understood that “the words of a claim are
generally given their ordinary and customary meaning.”

Phillips

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

“We have made clear,

moreover, that the ordinary and customary meaning of a claim
term is the meaning that term would have to a person of ordinary
skill in the art in question at the time of the invention, i.e.,
as of the effective filing date of the patent application.”
at 1313 (citations omitted).

When construing claim terms one

Id.

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relies primarily upon “intrinsic evidence,” i.e., the claims,
the specification, and the prosecution history, reading the
terms in the context of the claim and the patent as a whole.
See Sunovion Pharms., Inc. v. Teva Pharms. USA, Inc., 731 F.3d
1271, 1276 (Fed. Cir. 2013).

The words used in a claim must be given their common
meanings unless the inventor used them differently.

Inline

Plastics Corp. v. Tenneco Packing Corp., 979 F. Supp. 79, 83 (D.
Conn. 1997), Envirotech Corp. v. Al George, Inc., 730 F.2d 753,
759 (Fed. Cir. 1984).

And, of course, the common meaning is the

meaning a person of ordinary skill in the relevant art would
give to the claim.

Id.

As in Inline Plastics, the term “shoulder” or here, “bottom
shoulder,” as used in Claim 1 of the ‘764 Patent, “is consistent
with the relevant, common dictionary meaning of the word
‘shoulder,’ that is, any projection for keeping something in
place, or preventing movement past the projection.”

Inline

Plastics, at 83 (citing Funk and Wagnall, Standard College
Dictionary, (1963).

Nothing in the ‘764 patent, or the

pleadings filed, suggests that the inventor meant to use the
term “shoulder” differently.

Indeed, in context, the common

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meaning is entirely consistent with the described function of
the invention.

A reasonable person of ordinary skill in the field of
mechanical or product design engineering related to small arms
manufacturing would readily understand the term “shoulder,” in
the context of Claim 1, to mean that bottom surface of the
described ribs that engages the upper part of the magazine
flange.

The described “shoulder” is plainly meant to provide an

abutment between the ribs themselves and the upper part of the
flange – an opposing force capturing or containing the flange,
restricting its movement, particularly upwards, and securing the
extender to the magazine (in combination with the tangs).

Accordingly, the meaning of “shoulder” is construed
consistently with its common dictionary meaning, as described in
Inline Plastics Corp.

In the context of the ‘764 patent, then,

“bottom shoulder” means that part of the described ribs, at the
bottom end, projecting or contoured for capturing the upper
surface of a magazine floor plate as an abutment, to prevent
movement of the floor plate, particularly upwardly, while the
extender is in use.

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The parties’ proposed definitions are deficient in a number
of ways, but extensive discussion is not warranted.

It should

perhaps be noted, however, that plaintiffs’ proposed 90-degree
plane limitation is fundamentally inconsistent with the varied
contour expectation inherent in the common understanding of the
term “shoulder.”

The construct of the described rib “shoulder”

would be readily understood by one skilled in the mechanical and
design arts related to small arms manufacture as including
varied slopes, widths, spacings, and contact points,
consistently with the ordinary definition of the term.

The

contour of the “shoulders,” therefore, can be expected to vary
widely, as the term is a general descriptor of a bottom rib
configuration that serves as an abutment, and “captures” and
secures the upper surface of the flange on the bottom of the
inserted magazine.

SO ORDERED.

____________________________
Steven J. McAuliffe
United States District Judge
June 6, 2016
cc:

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

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