RMDI v. Remington Arms Company, Inc. et al
Filing
177
MEMORANDUM DECISION granting 98 Motion for Summary Judgment; granting 100 Motion for Summary Judgment; granting 107 Motion for Summary Judgment; denying 139 Motion for Partial Summary Judgment; granting 165 Motion for Summary Judgment. Signed by Judge Ted Stewart on 01/18/2012. (tls)
IN THE UNITED STATES COURT FOR THE DISTRICT OF UTAH
CENTRAL DIVISION
RMDI, LLC, a Utah limited liability company
and ZDF IMPORT/EXPORT, LLC d/b/a
Robinson Armament Co., a Utah limited
liability company,
Plaintiffs,
MEMORANDUM DECISION AND
ORDER ON MOTIONS FOR
SUMMARY JUDGMENT
vs.
REMINGTON ARMS CO., INC., a North
Carolina corporation, BUSHMASTER
FIREARMS INT’L, LLC, a Maine limited
liability company, ROCK RIVER ARMS,
INC., an Illinois corporation, and MAGPUL
INDUSTRIES CORP., a Colorado
corporation,
Case No. 2:10-CV-29 TS
Defendants.
This matter is before the Court on Motions for Summary Judgment filed by Defendants
Remington Arms Co, Inc., Bushmaster Firearms Int’l, LLC, Rock River Arms, Inc., and Magpul
Industries Corp (collectively, “Defendants”).1 Defendants’ Motions seek a ruling that United
1
Docket Nos. 98, 100, 107, and 165.
1
States Patent No. 7,596,900 (“the ‘900 Patent”) is invalid under 35 U.S.C. § 102(g). Plaintiffs
have filed their own Motion for Partial Summary Judgment, seeking dismissal of Defendants’ §
102(g) defense.2 For the reasons discussed below, the Court will grant Defendants’ Motions for
Summary Judgment and deny Plaintiffs’ Motion.
I. SUMMARY JUDGMENT STANDARD
Summary judgment is proper if the moving party can demonstrate that there is no genuine
issue of material fact and it is entitled to judgment as a matter of law.3 In considering whether a
genuine issue of material fact exists, the Court determines whether a reasonable jury could return
a verdict for the nonmoving party in the face of all the evidence presented.4 The Court is
required to construe all facts and reasonable inferences in the light most favorable to the
nonmoving party.5
II. STATEMENT OF FACTS
Plaintiff RMDI is the owner by assignment of all right, title, and interest in and to the
‘900 Patent. Plaintiff Robinson Armament is the exclusive licensee of all rights to practice the
2
Docket No. 139.
3
FED. R. CIV. P. 56(a).
4
See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 249 (1986); Clifton v. Craig, 924
F.2d 182, 183 (10th Cir. 1991).
5
See Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986);
Wright v. Sw. Bell Tel. Co., 925 F.2d 1288, 1292 (10th Cir. 1991).
2
claims of the ’900 patent. Plaintiffs bring this action against Defendants asserting that certain
firearms (the “Accused Products”) infringe certain claims of the ‘900 Patent.6
For purposes of these Motions, Defendants have accepted Plaintiffs’ assertion of
infringement. Defendants argue that the ‘900 Patent is invalid under 35 U.S.C. § 102(g) because
of Rock River’s prior development of the allegedly infringing LAR-8 rifle. It is undisputed that
Rock River conceived of and reduced to practice its LAR-8 rifle prior to Plaintiffs’ reduction to
practice of the invention of the ‘900 patent. Plaintiffs argue, however, that Rock River
suppressed or concealed its invention. The following facts are relevant to the issue of
suppression or concealment.
By July 2001, Rock River first produced drawings related to the LAR-8 rifle. These
drawings were further revised over the next several months and, from these revised drawings,
sample parts were ordered. Once the sample parts were ordered, Rock River continued to
measure, test, and refine them. By November 2001, Rock River ordered parts for a plastic
LAR-8 prototype, and completed assembly of that prototype. Upon assembly, Rock River
checked for look, function, and whether the parts mated well together.
From December 2001 to March 2002, Rock River continued to refine component
parts and revise the drawings for the LAR-8. In May 2002, Rock River ordered and received
metal components to replace the plastic components in the plastic prototype. In June 2002, Rock
6
Specifically, Plaintiffs assert that all of the Accused Products infringe claims 1, 3, 6, 7, 8,
10, 11, 18, 24, and 25 of the ‘900 Patent.
3
River completed construction and testing of a metal LAR-8 prototype. This “Test 1” rifle was
assembled and tested that same month.
In October 2002, Rock River ordered and received additional prototype lower receivers
for the LAR-8. In November 2002, Rock River conducted endurance testing on the “Test 2” and
“Test 3” rifles. Rock River fired approximately 10,000 rounds through the prototype rifles.
Upon completion of the prototype testing, Rock River began the development phase of having
the LAR-8 upper receiver and lower receiver made from aluminum forgings. Aluminum
forgings provide certain strength benefits. This process took five to seven months. Also in
November 2002, Rock River began work on a muzzle brake for the LAR-8 rifle.
In December 2002, Rock River sent sample crush washers, extractor pins, and ejectors for
heat treating and hardening. Once returned, Rock River tested and refined these parts over the
span of several weeks.
In December 2002 and January 2003, Rock River began working on developing and
testing anodized parts for the LAR-8 rifle. It took several weeks to receive, test, and refine the
anodized parts.
Beginning in December 2002, Rock River ordered upper and lower receiver forging dies
for the LAR-8 rifle. In January 2003, Rock River ordered 6,000 upper receiver forgings and
6,000 lower receiver forgings. It took approximately five months from the date of order before
Rock River received the first set of lower receiver forgings, and approximately seven months for
the upper receiver forgings.
4
In January 2003, Rock River began developing rear sights for the LAR-8 rifle in order to
achieve long-range sight adjustment. This process took nearly a year to complete.
In March 2003, Rock River ordered a magazine well broach, which it received in late July
2003. The broach was used to machine the interior surfaces of the magazine well of the LAR-8
lower receiver forging, including the machining of a channel into the magazine well of the lower
receiver forging to receive the FAL-style tabbed magazine. The process of designing a broach
took several months.
In May 2003, Rock River ordered several dies to cast several LAR-8 rifle parts, including
the magazine catch, bolt stop button, receiver block, trigger, and hammer. It took 8-10 weeks to
make the dies and then make sample parts from the dies. During this time, Rock River was
developing a new two-stage trigger for the LAR-8. Also during this time, Rock River was
working on the proper angles on the magazine catch and the magazine release pin to permit the
FAL magazine to release properly from the forged magazine well.
In May 2003, Rock River worked on creating dies for the manufacture of the charging
handle of the LAR-8 rifle. This process took several weeks. That same month, Rock River
received and tested barrel extensions.
In June 2003, Rock River began the development and design of the gas rings to use with
the LAR-8 rifle to prevent gas blow-by.
In June 2003, Rock River met with Bushmaster to show them a LAR-8 rifle prototype.
By August 2003, Rock River had completed a rifle to go to Bushmaster for testing and
evaluation. Rock River worked with Bushmaster to prepare stampings to mark the LAR-8 lower
5
receivers with the Bushmaster logo. On July 16, 2003, Bushmaster requested Continental
Machine Tool Co., Inc. to seek a Bureau of Alcohol, Tobacco and Firearms (“BATF”) variance
to mark the LAR-8 lower receivers with a “BAR” serial number designation. It took several
months to obtain this BATF variance before the lower receivers could be marked with the new
serial number designation.
From June 2003 to November 2003, Rock River received, tested, and refined various
components, including the ejector springs, extractor springs, actions springs, and bolt catch
springs for the LAR-8 rifle. The process of receiving, testing, and refining these various parts
took several months to complete.
On November 25, 2003, Rock River delivered a prototype LAR-8 rifle to Bushmaster.
By the end of January 2003, Bushmaster was satisfied that Rock River had worked out any preproduction bugs and that the LAR-8 was a viable product.
Between December 2003 and February 9, 2004, Rock River prepared and filed a patent
application directed to the LAR-8.
In February 2004, Rock River began selling the accused LAR-8 rifles to Bushmaster, and
Bushmaster displayed the firearm under its own name (the Bushmaster .308) at the 2004
SHOT Show in Las Vegas, Nevada. Bushmaster thereafter resold the firearm.
On May 22, 2007, Rock River obtained its patent directed to the LAR-8 rifle, the ‘462
Patent.
6
III. DISCUSSION
Defendants seek summary judgment that the ‘900 Patent is invalid pursuant to 35 U.S.C.
§ 102(g), while Plaintiffs seek judgment on Defendants’ § 102(g) claim. Section 102(g)(2)
states, in pertinent part: “A person shall be entitled to a patent unless . . . before such person’s
invention thereof, the invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it.” “Section 102(g) operates to ensure that a patent is
awarded only to the ‘first’ inventor in law.”7 Section “102(g) may be asserted as a basis for
invalidating a patent in defense to an infringement suit.”8 “[I]f a patentee’s invention has been
made by another, prior inventor who has not abandoned, suppressed, or concealed the invention,
§ 102(g) will invalidate that patent.”9
The Federal Circuit has developed a shifting burdens test when challenging a patent under
§ 102(g).
[T]he challenger of the validity of a patent must establish prior invention by clear
and convincing evidence. If the challenger does so, the burden of production
shifts to the patentee to produce evidence sufficient to create a genuine issue of
material fact as to whether the prior inventor abandoned, suppressed, or concealed
the invention. If the patentee carries this burden of production, the challenger
may rebut the evidence of abandonment, suppression, or concealment, with clear
and convincing evidence to the contrary.10
7
Apotex USA, Inc. v. Merck & Co., Inc., 254 F.3d 1031, 1035 (Fed. Cir. 2001).
8
Id.
9
Id.
10
Dow Chem. Co. v. Astro-Valcour, Inc., 267 F.3d 1334, 1339 (Fed. Cir. 2001) (citing
Apotex, 254 F.3d at 1037-38).
7
There is no dispute here that the LAR-8 rifle was conceived of and reduced to practice
prior to RMDI’s reduction to practice of the invention of the ‘900 Patent. Further, for the
purposes of this Motion, Defendants have accepted Plaintiffs’ assertion of infringement.
Therefore, the issues remaining are whether Plaintiffs have presented evidence creating a genuine
issue of material fact as to whether Rock River abandoned, suppressed, or concealed the LAR-8
rifle and, if so, whether Defendants have rebutted the evidence of abandonment, suppression, or
concealment, with clear and convincing evidence to the contrary.
A.
ABANDONMENT, SUPPRESSION, OR CONCEALMENT
“There are two types of suppression or concealment: cases in which the inventor
intentionally suppresses or conceals his invention, and cases in which a legal inference of
suppression or concealment can be drawn based on an unreasonable delay in making the
invention publicly known.”11 Plaintiffs argue that they have presented evidence showing both
intentional suppression or concealment and evidence establishing a legal inference of suppression
or concealment.
1.
Intentional Suppression or Concealment
Plaintiffs first argue that there is evidence of intentional suppression or concealment.
“Intentional suppression occurs when an inventor ‘designedly, and with the view of applying it
indefinitely and exclusively for his own profit, withholds his invention from the public.’”12
“Intentional suppression, however, requires more than the passage of time. It requires evidence
11
Flex-Rest, LLC v. Steelcase, Inc., 455 F.3d 1351, 1358 (Fed. Cir. 2006).
12
Id. (quoting Paulik v. Rizkalla, 760 F.2d 1270, 1273 (Fed. Cir. 1985) (en banc)).
8
that the inventor intentionally delayed filing in order to prolong the period during which the
invention is maintained in secret.”13
Plaintiffs argue that Rock River intentionally suppressed or concealed the LAR-8 rifle by
delaying filing a patent application. Plaintiffs point to a single statement in the deposition of
Lester Larson, Rock River’s 30(b)(6) witness, in support of this contention. In his deposition,
Mr. Larson made the following statement:
A. In my eyes then to apply for a patent is -- is for an order of protection for 10
years on something that has been shown in public, and we have not shown this
project to anybody other than the people who were involved in it at that time.
And if we didn’t take this project to market for another five years, that would give
me -- I would actually lose time as far as protection on a patent, so to show
something before it’s ready to truly go to market, why would you do that? And
that’s just in -- in my world. . . .
Q. So your motivation was to wait until you were ready to go to the market -A. Try to get -Q. -- and then file?
A. Try to get it as close as you can because otherwise you will lose that 10-year or
whatever it is worth of protection. You know, I don’t want -- I don’t want to give
up five years on something and have somebody come in and copy it, you know,
when it’s too late.14
Plaintiffs argue that this statement is a “‘smoking gun’ confession” showing intentional
suppression.15 The Court disagrees. This single statement must be considered in the context of
Mr. Larson’s entire deposition and the other evidence in the record. Throughout his deposition,
Mr. Larson testified that Rock River did not intentionally delay filing a patent application.16
13
Fujikawa v. Wattanasin, 93 F.3d 1559, 1567 (Fed. Cir. 1996).
14
Docket No. 42, Ex. C at 169:19-171:3.
15
Docket No. 169, at 7.
16
Docket No. 42, Ex. C at 171:10-13.
9
Indeed, Mr. Larson testified repeatedly that Rock River was continually working on the LAR-8
rifle and did not stop working on the LAR-8 until it was ready to be brought to market.17 This is
supported by the other evidence in the record, discussed above, which demonstrates that Rock
River took great efforts to complete work on the LAR-8 rifle to ultimately bring that product to
market. Without any further evidence to support its argument that Rock River intentionally
suppressed or concealed its invention, the Court finds that Plaintiffs have failed to raise a genuine
issue of material fact regarding intentional suppression or concealment.
Plaintiffs argue this case is similar to Lutzker v. Pelt.18 Putting aside, for the moment,
Defendants’ arguments that Lutzker is inapplicable, the Court finds it to be clearly
distinguishable. Lutzker involved an interference proceeding, wherein Lutzker reduced his
invention to practice by the end of March 1976, but did not publicly disclose it until July 1980.
During that time period, Lutzker developed molds and a recipe book to be sold along with his
invention. However, these items were not part of his patent application. The Federal Circuit
agreed that this evidence raised an inference of suppression or concealment, and provided
evidence of intentional suppression “because of [Lutzker’s] deliberate policy not to disclose his
invention to the public until he [was] ready to go into commercial production.”19
This is not the case before the Court. The evidence shows that Rock River continually
worked on the development of its LAR-8 rifle and sought patent protection within a reasonable
17
Id. at 171:14-20; id. at 162:18-22.
18
843 F.2d 1364 (Fed. Cir. 1988).
19
Id. at 1368.
10
time after completing the invention. There is nothing to suggest that Rock River engaged in the
type of conduct that the Federal Circuit found objectionable in Lutzker. Further, as will be
discussed below, the Federal Circuit has “expressly distinguished Lutzker . . . from situations in
which public disclosure occurred by bring the invention to market” because Lutzker did “not
address—as is the case here—disclosure through commercialization.”20
Plaintiffs further argue that public disclosure by bringing the invention to market is not
applicable in cases of intentional suppression. The Court need not determine this issue because,
as discussed above, Plaintiffs have failed to raise a genuine issue of material fact on the issue of
intentional suppression.
2.
Inference of Suppression or Concealment
Plaintiffs further argue that the delay in Rock River filing its patent application raises an
inference that Rock River suppressed or concealed the LAR-8 rifle. Plaintiffs further argue that
Rock River’s commercialization efforts do not excuse Rock River’s alleged suppression or
concealment.
“The failure to file a patent application, to describe the invention in a published
document, or to use the invention publicly, within a reasonable time after first making the
invention may constitute abandonment, suppression, or concealment.”21 “[T]here is no particular
length of delay that is per se unreasonable.”22 “Mere delay, without more, is not sufficient to
20
Flex-Rest, 455 F.3d at 1360.
21
Dow Chem., 267 F.3d at 1342 (citations omitted).
22
Checkpoint Sys., Inc. v. U.S. Int’l Trade Comm’n, 54 F.3d 756, 761 (Fed. Cir. 1995).
11
establish suppression or concealment.”23 Rather, “each case involving the issue of suppression or
concealment must be considered on its own particular set of facts.”24
The Court must first address a dispute between the parties as to whether Rock River’s
efforts to bring its invention to market should be considered in determining whether there is
evidence to support an inference of suppression or concealment. The Federal Circuit has made
clear that such efforts should be considered. The Federal Circuit has stated that “[o]ne way a
prior inventor may avoid the disqualifying effect of § 102(g) is by promptly filing a patent
application claiming the invention.”25 However, “[f]iling a patent application is not the only way
to bring the benefit of the knowledge of an invention to the public.”26 Another way is to show
“that the first inventor engaged in reasonable efforts to bring the invention to market.”27
Plaintiffs argue that Rock River’s efforts to bring its invention to market should not be
considered here because Rock River chose to seek patent protection. Plaintiffs argue that an
inventor can either publicly disclose an invention or seek patent protection, but cannot do both.
Plaintiffs argue that, since Rock River chose to file its own patent application, its efforts to bring
the LAR-8 rifle to market cannot be considered.
23
Young v. Dworkin, 489 F.2d 1277, 1281 (C.C.P.A. 1974).
24
Paulik, 760 F.2d at 1275 (quotation marks and citation omitted).
25
Checkpoint, 54 F.3d at 761.
26
Id. at 763.
27
Id. at 762; see also Dow Chem. Co., 267 F.3d at 1343.
12
The problem with Plaintiffs’ argument is that it runs contrary to Federal Circuit law. The
Court need look no further than Flex-Rest to dispel this claim. In Flex-Rest, as here, the party
challenging the patent both took steps to bring its invention to market and filed a patent
application.28 It was of no concern to the Flex-Rest court that the challenger both filed a patent
application and commercially disclosed its product. Rather, the court focused on whether the
invention had been disclosed publicly, regardless of the method. This approach is consistent
with the case law quoted above, demonstrating the filing a patent application is but one way to
publicly disclose an invention.
Further, the plaintiff in Flex-Rest made the same argument that Plaintiffs make here, that
this case is controlled by Lutzker and Young. The court provided the following analysis:
We disagree with Flex-Rest’s contention that Lutzker and Young command a
different result. First, both Lutzker and Young address disclosing a prior
invention only by filing a patent application; they do not address—as is the case
here—disclosure through commercialization. In an interference context, we have
held that delayed filing due to commercialization efforts or improvements not
reflected in the patent application are inexcusable. However, we have expressly
distinguished Lutzker and Young from situations in which public disclosure
occurred by bringing the invention to market. Therefore, the “reasonable steps to
market” identified in Dow Chemical and Checkpoint are applicable here.29
28
Flex-Rest, 455 F.3d at 1359 (“The record demonstrates that after reduction to practice,
Steelcase moved almost immediately towards both filing a patent application and commercially
disclosing the KBS at a trade show, actions which indicate an intent to make a public
disclosure.”).
29
Id. at 1360.
13
The same conclusion is required here. The evidence clearly shows that Rock River
disclosed its invention by bringing it to market. The fact that Rock River chose, as did the
defendant in Flex-Rest, to also file a patent application, is of no moment.
Checkpoint, Dow Chemical, and Flex-Rest provide helpful analysis in determining what
efforts are “reasonable” in a situation where public disclosure occurs by bringing an invention to
market. In Checkpoint, the Federal Circuit found a delay of four years between reduction to
practice and commercialization was reasonable where the inventor took steps to bring the
invention to market, including disclosing it to his employer, conducting further tests, purchasing
supplies from vendors, and helping develop a system for mass production.30
In Dow Chemical, the Federal Circuit “held that a delay of two and one-half years
between reduction to practice and the commercialization of an invention did not constitute a
prima facie case of suppression or concealment where the first inventor made ‘reasonable efforts
to bring the invention to market.’”31 In that case, the inventor “actively and continuously took
steps towards the commercialization of the [invention], including the procurement of financing to
build a new production plant and the attention to safety considerations.”32 The court noted that
“[a] prior inventor is not required to take the fastest route to commercialization, but only to make
‘reasonable efforts to bring the invention to market.’”33
30
Checkpoint, 54 F.3d at 762.
31
Flex-Rest, 455 F.3d at 1359 (quoting Dow Chem., 267 F.3d at 1343).
32
Dow Chem., 267 F.3d at 1343.
33
Id. (quoting Checkpoint, 54 F.3d at 762).
14
In Flex-Rest, the court found a six month delay between reduction of practice and
disclosure to be reasonable because the defendant spent that time acquiring the necessary tooling
for a part of the invention.34
In reviewing the facts of this case, the Court finds that Rock River’s efforts to bring its
LAR-8 rifle to market were reasonable and Plaintiffs have failed to present evidence creating a
genuine issue of material fact to dispute this. As set forth in detail above, Rock River worked
continuously in the development of its invention. During the delay between reduction to practice
and commercialization, Rock River worked diligently to order, receive, and test the various
components of the LAR-8 rifle to ensure not only a working product, but also alleviate any safety
concerns. These are the precise activities that the Federal Circuit in Checkpoint, Dow Chemical,
and Flex-Rest have found to be reasonable. While Plaintiffs argue that this could have been done
more quickly, “[a] prior inventor is not required to take the fastest route to commercialization,
but only make ‘reasonable efforts to bring the invention to market.’”35 For all of these reasons,
the Court finds that Plaintiffs have failed to provide evidence establishing a genuine issue of
material fact as to whether Rock River abandoned, suppressed, or concealed the invention.
B.
EVIDENCE TO THE CONTRARY
Even if the Court were to find that Plaintiffs have presented evidence creating a genuine
issue of material on the issue of suppression or concealment, the Court finds that Defendants
have presented clear and convincing evidence to the contrary.
34
Flex-Rest, 455 F.3d at 1359.
35
Dow Chem. Co., 267 F.2d at 1343 (quoting Checkpoint, 54 F.3d at 762).
15
IV. CONCLUSION
It is therefore
ORDERED that Defendants’ Motions for Summary Judgment (Docket Nos. 98, 100, 107,
and 165) are GRANTED. It is further
ORDERED that Plaintiffs’ Cross Motion for Summary Judgment (Docket No. 139) is
DENIED.
The Clerk of the Court is directed to enter judgment in favor of Defendants and against
Plaintiffs on the validity of claims 1, 3, 6, 7, 8, 10, 11, 18, 24, and 25 of the ‘900 Patent, and
close this case forthwith.
DATED January 18, 2012.
BY THE COURT:
_____________________________________
TED STEWART
United States District Judge
16
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?