Steyr Arms, Inc. v. Sig Sauer, Inc.
Filing
77
///ORDER granting 65 Motion for Summary Judgment; terminating as moot 62 Motion for Summary Judgment; denying 63 Motion for Summary Judgment; terminating as moot 64 Motion for Summary Judgment. Clerk shall enter judgment and close the case. So Ordered by Judge Joseph A. DiClerico, Jr.(gla)
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEW HAMPSHIRE
Steyr Arms, Inc.
v.
Civil No. 17-cv-483-JD
Opinion No. 2020 DNH 027
SIG Sauer, Inc.
O R D E R
Steyr Arms, Inc. brought suit, alleging that Sig Sauer,
Inc. is infringing U.S. Patent No. 6,260,301 (“‘301 Patent”),
which Steyr owns.
The ‘301 Patent has a single claim that
pertains to a pistol with a plastic housing and a single
multifunction metal part.
Steyr accuses Sig Sauer of infringing
Claim 1 of the ‘301 Patent by manufacturing and selling its P250
and P320 pistols.
Steyr moves for summary judgment on
infringement, and SIG Sauer moves for summary judgment of
noninfringement, asserting that its accused pistols do not
infringe Claim 1.1
Standard of Review
In a patent infringement case, the law of the Federal
Circuit governs substantive issues of patent law, including
issues pertaining to patent invalidity.
UCP Int’l Co. Ltd. v.
The parties also move for summary judgment on the
invalidity defenses raised by SIG Sauer.
1
Galsam Brands Inc., 787 Fed. Appx. 691, 698 (Fed. Cir. 2019); 02
Micro Int’l, Ltd. v. Monolithic Power Sys., Inc., 467 F.3d 1355,
1365 (Fed. Cir. 2006).
For purposes of the procedural standard
of review applicable to motions for summary judgment, however,
the court applies the standard used by the First Circuit.
Pharma Tech Solutions, Inc. v. LifeScan, Inc., 942 F.3d 1372,
1379-80 (Fed. Cir. 2019).
In this district, “[a] memorandum in support of a summary
judgment motion shall incorporate a short and concise statement
of material facts, supported by appropriate record citations, as
to which the moving party contends there is no genuine issue to
be tried.”
LR 56.1(a).
“A memorandum in opposition to a
summary judgment motion shall incorporate a short and concise
statement of material facts, supported by appropriate record
citations, as to which the adverse party contends a genuine
dispute exists so as to require a trial.”
LR 56.1(b).
“All
properly supported material facts set forth in the moving
party’s factual statement may be deemed admitted unless properly
opposed by the adverse party.”
Id.
Both parties respond to the opposing factual statements as
if responding to a complaint.
provided by Local Rule 56.1.
That is not the procedure
The court will not reject the
filings as noncompliant, however, to avoid unnecessary delay.
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Summary judgment is appropriate when “there is no genuine
dispute as to any material fact and the movant is entitled to
judgment as a matter of law.”
Fed. R. Civ. P. 56(a); see also
Thomas v. Harrington, 909 F.3d 483, 490 (1st Cir. 2019).
For
purposes of summary judgment, the court considers the facts in
the light most favorable to the plaintiff and draws all
reasonable inferences in her favor.
Roy v. Correct Care
Solutions, LLC, 914 F.3d 52, 57 (1st Cir. 2019).
“An issue is
genuine if it can be resolved in favor of either party, and a
fact is material if it has the potential of affecting the
outcome of the case.”
Leite v. Bergeron, 911 F.3d 47, 52 (1st
Cir. 2018) (internal quotation marks omitted).
“A genuine issue
of material fact only exists if a reasonable factfinder,
examining the evidence and drawing all reasonable inferences
helpful to the party resisting summary judgment, could resolve
the dispute in that party’s favor.”
Town of Westport v.
Monsanto Co., 877 F.3d 58, 64-65 (1st Cir. 2017); Flood v. Bank
of Am. Corp., 780 F.3d 1, 7 (1st Cir. 2015).
Background
The ‘301 Patent is titled “Pistol, Whose Housing is
Composed of Plastic” and describes a pistol that is made from
both plastic, to reduce its weight, and metal, to accommodate
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the forces that occur during firing.
As stated in the patent,
the “invention relates to a pistol which comprises a housing
composed of plastic, a barrel slide (which contains a barrel and
a breech and is guided in the longitudinal direction with
respect to the housing) and a trigger mechanism.”
col. 1, ll. 6-10.
‘301 Patent,
An object of the invention was “to provide a
pistol construction which allows for the use of plastics
technology to a large extent, and which provides high precision
and simple assembly.”
Id., ll. 40-43.
The application that resulted in the ‘301 Patent was filed
on August 13, 1999.
As presented in the application, the patent
had four claims, an independent claim and three dependent
claims.
The Patent Examiner rejected all four claims.
After
further proceedings, the applicant filed an amended application
with a single claim, Claim 1.
That claim was allowed, and the
‘301 Patent issued on July 17, 2001.
Claim 1 of the ‘301 Patent provides as follows:
1. A pistol comprising a housing; a barrel slide
movably mounted on the housing for movement in a
firing direction with respect to a barrel; and a
trigger mechanism located, at least in part, within
the housing, the improvement which comprises a
multifunction metal part removably insertable within
said housing, said multifunction metal part being
provided with guides for the barrel slide and means
for supporting the trigger mechanism, said
multifunction metal part and housing are each provided
with a transverse hole which receives a shaft for
connecting the housing and the multifunction metal
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part together, the housing has a rear wall which is
provided with a recess for receiving a projection on
the multifunction metal part the multifunction metal
part includes control means for locking said barrel in
the barrel slide.
In the claim construction order issued on June 5, 2018, the
court construed the disputed limitations in Claim 1 as follows:
1.
“Multifunction metal part”
A single, one-piece metal frame that serves
multiple functions.
2.
“Means for supporting the trigger mechanism”
Function: To support the trigger mechanism and
to connect it to the multifunction metal part.
Structure: Pins and corresponding holes in the
multifunction metal part, and equivalents thereof.
3. “A transverse hole which receives a shaft for
connecting the housing and the multifunction metal
part together”
Transverse holes in the housing and in the
multifunction metal part that are aligned to receive a
shaft, which is not limited in shape, type, or kind,
to connect the housing and the multifunction part
together.
4. “A rear wall which is provided with a recess for
receiving a projection” is sufficiently clear that it
does not require construction.
5. “Control means for locking said barrel in the
barrel slide.”
The function is to lock or contribute to lock the
barrel in the barrel slide.
The corresponding structure is a bridge that is
an integral, inseparable part of the one-piece
multifunction metal part and extends from the righthand to the left-hand sides of the multifunction metal
part, and equivalents thereof.
The accused pistols in this case are SIG Sauer’s P250 and
P320 pistols.
They each have plastic housings and metal frames.
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They also have pins that are removable from the metal frames.
Steyr contends that when the pins are assembled into the metal
frames they serve the purpose of the ‘301 Patent limitation for
a “control means for locking said barrel in the barrel slide.”
Discussion
Steyr moves for summary judgment in its favor that the
accused pistols infringe Claim 1 of the ‘301 Patent.
SIG Sauer
moves for summary judgment that the accused pistols do not
infringe the ‘301 Patent.
Because it is dispositive, the court
addresses SIG Sauer’s motion first.
A patent holder who claims infringement bears the burden of
proving infringement by a preponderance of the evidence.
Eli
Lilly & Co. v. Hospira, 933 F.3d 1320, 1328 (Fed. Cir. 2019).
“To prove infringement, a patentee must supply sufficient
evidence to prove that the accused product or process contains,
either literally or under the doctrine of equivalents, every
limitation of the properly construed claim.”
Id.
must be proved by a preponderance of the evidence.
Infringement
Id.
An accused infringer may initially show that summary
judgment of noninfringement is proper either by producing
evidence that would preclude a finding of infringement, or by
showing that the evidence on file fails to create a material
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factual dispute as to any essential element of the patentee's
case.
Novartis Corp. v. Ben Venue Labs., Inc., 271 F.3d 1043,
1046 (Fed. Cir. 2001).
“[N]othing more is required [from the
accused infringer] than the filing of a summary judgment motion
stating that the patentee had no evidence of infringement and
pointing to the specific ways in which accused systems did not
meet the claim limitations.”
Exigent Tech., Inc. v. Atrana
Solutions, Inc., 442 F.3d 1301, 1309 (Fed. Cir. 2006).
A motion
for summary judgment of noninfringement will be granted if the
accused infringer shows that no reasonable jury could find
infringement.
Ottah v. Fiat Chrysler, 884 F.3d 1135, 1140 (Fed.
Cir. 2018).
I.
Motion for Summary Judgment of Non-Infringement
SIG Sauer contends that Steyr cannot prove that either of
the accused pistols infringes the ‘301 Patent.
Specifically,
SIG Sauer contends that Steyer cannot show that the accused
pistols infringe the limitation of a “multifunction metal part”
or the means-plus-function limitation of a “control means for
locking said barrel in the barrel slide.”
Styer argues the
accused pistols meet both limitations.
Once disputed claims are construed, infringement depends on
whether “the accused product meets each limitation of the claim
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as construed.”
Amgen Inc. v. Amneal Phar. LLC, 945 F.3d 1368,
1375 (Fed. Cir. 2020).
“For literal infringement, the patentee
must prove that the accused product meets all the limitations of
the asserted claims; if even one limitation is not met, there is
no literal infringement.”
E.I. du Pont De Nemours & Co. v.
Unifrax I LLC, 921 F.3d 1060, 1073 (Fed. Cir. 2019).
“Even when
an accused product does not meet each and every claim element
literally, it may nevertheless be found to infringe the claim
‘if there is “equivalence” between the elements of the accused
product or process and the claimed elements of the patented
invention.’”
Intendis GMBH v. Glenmark Pharms. Inc., USA, 822
F.3d 1355, 1360 (Fed. Cir. 2016) (quoting Warner-Jenkinson Co.
v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997)).
A.
Multifunction Metal Part
The first disputed limitation of the ‘301 Patent, “a
multifunction metal part,” was construed to mean “[a] single,
one-piece metal frame that serves multiple functions.”
The
accused pistols have one-piece metal frames that serve multiple
functions.
Based on that much of Claim 1, Steyr contends the
accused pistols meet the multifunction metal part limitation.
SIG Sauer, however, asserts that the last limitation in
Claim 1, “the multifunction metal part includes a control means
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for locking said barrel in the barrel slide,” further restricts
the limitation of “a multifunction metal part.”
The structure
of the control means was construed to be “a bridge that is an
integral, inseparable part of the one-piece multifunction metal
part.”
The structure in the accused pistols that Steyr has
identified as the “control means” is a removable pin that must
be assembled to be part of the multifunction metal part.
The
parties agree that the removable pin in the accused pistols is
not “an integral, inseparable part of the one-piece
multifunction metal part.”
In response, Steyr argues that because “control means” is a
separate limitation in Claim 1, the construction of “control
means” cannot be considered for purposes of determining
infringement of the “multifunction metal part” limitation.2
Steyr cites no legal authority to support its piecemeal theory.
Under Steyr’s theory, the multifunction metal part claimed in
the ‘301 Patent could have both a control means that is a
separable part, under the first limitation, and also require the
Steyr also argues that because the court did not consider
SIG Sauer’s argument during claim construction that removable
pins could not be control means, the court found that the pins
could be control means and that the multifunction metal part
need not include a bridge. That is not what happened. The
court simply declined to address an infringement argument in the
context of claim construction. The current motions for summary
judgment are the appropriate context to consider infringement
arguments.
2
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control means to be inseparable from the metal part, under the
last limitation.
Steyr’s theory would remove the limitation of
an integral and inseparable control means from Claim 1 and would
render its limitations contradictory.
Claim 1 of the ‘301 Patent claims a multifunction metal
part which is a single, one-piece metal frame that serves
multiple functions.
The one-piece metal part includes a bridge,
which is an integral, inseparable part of the one-piece
multifunction metal part, that locks or contributes to lock the
barrel in the barrel slide.
Because the accused pistols do not
include a bridge that is an integral, inseparable part of the
one-piece multifunction metal part, they do not literally
infringe Claim 1 of the ‘301 Patent.
B.
Means-Plus-Function Limitation
Steyr argues that the pins in the accused pistols infringe
the control means limitation of Claim 1 under the means-plusfunction analysis of 35 U.S.C. § 112(6).3
“‘Literal infringement
of a means-plus-function limitation requires that the relevant
structure in the accused device (1) perform the identical
function recited in the claim and (2) be identical or equivalent
By extension, if the pins are equivalent to the control
means, the pistols would also infringe the first limitation
under the doctrine of equivalents.
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to the corresponding structure in the specification.’”
Tomita
Techs. USA, LLC v. Nintendo Co., Ltd., 681 F. App’x 967, 970
(Fed. Cir. 2017) (quoting Gen. Protecht Grp., Inc. v. Int’l
Trade Comm’n, 619 F.3d 1303, 1312 (Fed. Cir. 2010)).
The
determination of whether the relevant structure in the accused
device is equivalent to the corresponding structure claimed in
the patent, which is known as structural equivalence, requires
an application of the doctrine of equivalents.
Warner-Jenkinson
Co., 520 U.S. at 28.
Steyr relies on structural equivalence, arguing that the
pin and the bridge perform the identical function in the same
way with the same result.
See Odetics, Inc. v. Storage Tech.
Corp., 185 F.3d 1159, 1170 (Fed. Cir. 1999).
Equivalence does
not exist if “the way the accused product performs the function
or the result thereof is ‘substantially different’ from the way
or result of the subject patent.”
Tomita Tech., 681 F. App’x at
971 (quoting Odetics, 185 F.3d at 1267).
Under the “all
elements rule,” however, each limitation in a claim is material
and the doctrine of equivalents cannot be used to show
infringement if the result would eliminate one of the elements
of the claim.
DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 469 F.3d 1005, 1016-17 (Fed. Cir. 2006).
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In this case, the function of the control means is to lock
or contribute to lock the barrel in the barrel slide.4
The
corresponding structure is a bridge “that is an integral,
inseparable part of the one-piece multifunction metal part.”
Steyr contends that the removable pins used in the accused
pistols to lock the barrel in the barrel slide are structurally
equivalent to the bridge that is an integral, inseparable part
of the multifunction metal part in Claim 1.
At SIG Sauer points out, removable and inseparable
structures are substantially different.
If the removable pins
were deemed to be structurally equivalent to the inseparable
bridge in Claim 1, that equivalence would eliminate the element
that the control means must be an integral and inseparable part
of the multifunction metal part.
of structural equivalence.
That is an impermissible use
Warner-Jenkinson, 520 U.S. at 29.
Therefore, taking the facts in the light most favorable to
Steyr, there is no dispute that the accused pistols do not
infringe Claim 1 of the ‘301 Patent.
Although the parties dispute whether the pins and the
control means have the identical function, the court need not
address function because the other parts of the analysis are
resolved against Steyr.
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II.
Steyr’s Motion for Summary Judgment of Infringement
Steyr moved for summary judgment that the accused pistols
infringe Claim 1 of the ‘301 Patent.
For the reasons stated
above, Steyr has not carried its burden to show infringement.
III.
Invalidity
Steyr moved for summary judgment that the ‘301 Patent is
valid, addressing SIG Sauer’s affirmative defense of invalidity
and unenforceability.
SIG Sauer moved for summary judgment on
its affirmative defense that the ‘301 Patent is invalid under
§ 112 because it lacks a sufficient written description of what
it means to lock the barrel in the barrel slide.
Because the
court has determined that the accused pistols do not infringe
the ‘301 Patent, it is unnecessary to consider the affirmative
defenses raised by SIG Sauer.
Conclusion
For the foregoing reasons, SIG Sauer’s motion for summary
judgment of noninfringement (document no. 65) is granted.
Steyr’s motion for summary judgment of infringement (document
no. 63) is denied.
The motions for summary judgment on patent validity
(documents nos. 62 and 64) are terminated as moot.
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The clerk of court shall enter judgment accordingly and
close the case.
SO ORDERED.
______________________________
Joseph A. DiClerico, Jr.
United States District Judge
February 25, 2020
cc:
Counsel of Record.
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