DocketNumber: 20-2140
Filed Date: 9/15/2021
Status: Non-Precedential
Modified Date: 9/15/2021
Case: 20-2140 Document: 26 Page: 1 Filed: 09/15/2021 NOTE: This disposition is nonprecedential. United States Court of Appeals for the Federal Circuit ______________________ ERIC LEMOINE, TTC PERFORMANCE PRODUCTS, INC., DBA BLACK ACES TACTICAL, Plaintiffs-Appellants v. MOSSBERG CORPORATION, O.F. MOSSBERG & SONS, INC., Defendants-Appellees ______________________ 2020-2140 ______________________ Appeal from the United States District Court for the District of Connecticut in No. 3:18-cv-01270-KAD, Judge Kari A. Dooley. ______________________ Decided: September 15, 2021 ______________________ LOU GIGLIOTTI, JR., Louis R. Gigliotti, PA, Hollywood, FL, for plaintiffs-appellants. JASON STEWART JACKSON, Kutak Rock LLP, Denver, CO, for defendants-appellees. Also represented by CHAD T. NITTA. ______________________ Case: 20-2140 Document: 26 Page: 2 Filed: 09/15/2021 2 LEMOINE v. MOSSBERG CORPORATION Before LOURIE, O’MALLEY, and REYNA, Circuit Judges. REYNA, Circuit Judge. Appellants, Eric Lemoine and TTC Performance Prod- ucts, Inc. d/b/a Black Aces Tactical, appeal from a stipu- lated judgment of noninfringement following a claim construction order by the United States District Court for the District of Connecticut. Because we discern no error in the district court's claim construction, we affirm. BACKGROUND U.S. Patent 8,756,846 (the ’846 Patent) discloses a “shotgun magazine receiver assembly” that “relates gener- ally to shotguns and, more particularly to a retrofit maga- zine receiver for use with a conventional shotgun” that “allow[s] a user to rapidly fire and reload ammunition via a removable ‘box’ style magazine.” ’846 Patent col. 1 ll. 6–8, 34–35. The only disputes at issue on appeal relate to the pre- amble of claim 1, which is reproduced below: A shotgun magazine receiver assembly for convert- ing a conventional shotgun having a trigger assem- bly and barrel into a magazine loaded shotgun, said receiver assembly comprising: Id. col. 7 ll. 20–23. On April 20, 2015, Appellants, Eric Lemoine and TTC Performance Products, Inc. d/b/a Black Aces Tactical (col- lectively Lemoine), filed suit in the District of Connecticut alleging that Appellees, Mossberg Corporation and OF Mossberg & Sons, Inc.’s (collectively Mossberg), infringe the ’846 Patent based on its alleged making, offering for sale, and selling of its Model 590M box-style removable magazine shotgun. J.A. 25. On June 16, 2020, the district court issued a claim construction order determining that (1) the preamble of claim 1 of the ’846 Patent is limiting, (2) “conventional shotgun” means “a traditional shotgun Case: 20-2140 Document: 26 Page: 3 Filed: 09/15/2021 LEMOINE v. MOSSBERG CORPORATION 3 that does not accept a removeable box magazine,” and (3) “for converting a conventional shotgun” means “for retro- fitting a conventional shotgun after original manufacture.” J.A. 7–20. Because it is undisputed that Mossberg incor- porates the box-style magazine of the Model 590M during the original manufacture, the parties stipulated to a judg- ment of noninfringement of all claims of the ’846 Patent. J.A. 2–5. On July 20, 2020, the district court entered its final judgment, adopting the parties’ stipulation. J.A. 1. Lemoine appeals, arguing that the district court erred in its claim construction order. We have jurisdiction pursuant to28 U.S.C. § 1295
(a)(1). STANDARD OF REVIEW Claim construction is an issue of law that we review de novo. Teva Pharm. USA, Inc. v. Sandoz, Inc.,574 U.S. 318
, 325–26 (2015). We review the district court's underlying factual findings for clear error.Id. at 322
. “[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specification, along with the pa- tent’s prosecution history), the judge’s determination will amount solely to a determination of law,” which we review de novo.Id. at 331
. DISCUSSION Lemoine contends that the district court erred by “in- appropriately impos[ing] limitations on the ’846 Patent at claim construction, rendering the ’846 toothless against manufacturers who simply ‘convert’ existing models at the manufacturing stage” as opposed to “after original manu- facture.” Appellant’s Br. 3–4. More specifically, Lemoine argues that the district court erred in construing the pre- amble phrase “for converting a conventional shotgun” to mean “for retrofitting a shotgun after original manufac- ture.”Id. at 4, 23
. Lemoine also requests that the case be remanded with a requirement that “for converting a con- ventional shotgun” be construed to mean “regardless of Case: 20-2140 Document: 26 Page: 4 Filed: 09/15/2021 4 LEMOINE v. MOSSBERG CORPORATION whether the modification is made by a manufacturer in its factory or by an owner of an existing conventional shot- gun.”Id.
Mossberg responds that the district court’s construc- tion of the preamble phrase “for converting a conventional shotgun” represents the ordinary meaning of that phrase in view the intrinsic and extrinsic evidence and should be affirmed. Appellees’ Br. 12. Mossberg also contends that Lemoine waived its right to challenge the district court’s determination that the preamble of claim 1 is limiting by failing to meaningfully raise that issue before the district court or in its opening brief on appeal.Id.
at 11–12. First, as to whether claim 1 of the ’846 Patent is limit- ing, we agree with the district court and Mossberg that it is not entirely clear that Lemoine ever actually pulled the trigger in arguing that the preamble is not limiting. See, e.g., J.A. 7 n.5. Nonetheless, we determine that it is. The purpose of claim construction is to “determin[e] the meaning and scope of the patent claims asserted to be in- fringed.” Markman v. Westview Instruments, Inc.,52 F.3d 967
, 976 (Fed. Cir. 1995) (en banc), aff’d517 U.S. 370
, (1996). If a preamble is limiting, it becomes part of the claim. Eaton Corp. v. Rockwell Int'l Corp.,323 F.3d 1332
, 1339 (Fed. Cir. 2003). Whether a preamble is limiting is “determined on the facts of each case in light of the overall form of the claim, and the invention as described in the specification and illuminated in the prosecution history.” Applied Materials, Inc. v. Advanced Semiconductor Mate- rials Am., Inc.,98 F.3d 1563
, 1572–73 (Fed. Cir. 1996). Generally, the preamble does not limit the claims. Georgetown Rail Equip. Co. v. Holland L.P.,867 F.3d 1229
, 1236 (Fed. Cir. 2017). However, a preamble may be limit- ing if it recites essential structure or steps, or if it is neces- sary to give life, meaning, and vitality to the claim. Pitney Bowes, Inc. v. Hewlett–Packard Co.,182 F.3d 1298
, 1305 (Fed. Cir. 1999). Case: 20-2140 Document: 26 Page: 5 Filed: 09/15/2021 LEMOINE v. MOSSBERG CORPORATION 5 Here, the district court correctly held that the pream- ble of claim 1 of the ’846 Patent is limiting because it pro- vides important context for the nature and structure of the invention being claimed, and that without the context pro- vided by the preamble it is difficult to make sense of the claims. J.A. 12–16. For example, the preamble introduces the terms “shotgun magazine receiver assembly” and “con- ventional shotgun” and details the relationship between those terms, namely that the claimed invention is a “shot- gun magazine receiver assembly” for “converting a conven- tional shotgun.” Without this context, it is difficult to make sense of the later disclosure of “mating,” “receiving,” or “communicating” the claimed invention to or with compo- nents of a “conventional shotgun.”. Further, as discussed in more detail below, the specification repeatedly discloses that the claimed invention is a retrofit kit for existing con- ventional shotguns. See ’846 Patent col. 1 ll. 1–3; see alsoid.
col. 1 ll. 46–47. If the preamble was not limiting, these disclosures would be rendered meaningless. Having determined that the preamble of claim 1 of the ’846 Patent is limiting, we next set our sights on the proper construction of the preamble phrase “for converting a con- ventional shotgun.” We determine that the district court correctly construed this phrase to mean “for retrofitting a conventional shotgun after original manufacture.” A claim should be construed in a manner that is con- sistent with the patent's specification. Markman,52 F.3d at 979
(“Claims must be read in view of the specification, of which they are a part.”). Typically, the specification is the best guide for construing the claims. See, e.g., Vitronics Corp. v. Conceptronic, Inc.,90 F.3d 1576
, 1582 (Fed. Cir. 1996) (“[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.”). When the specification describes the features of the “present invention” as a whole, this description limits the Case: 20-2140 Document: 26 Page: 6 Filed: 09/15/2021 6 LEMOINE v. MOSSBERG CORPORATION scope of the invention. Honeywell Int’l, Inc. v. ITT Indus.,452 F.3d 1312
, 1318–19 (Fed. Cir. 2006). Here, the specifi- cation quite clearly characterizes the present invention as a “retrofit” conversion kit for use with an “existing” conven- tional shotgun. ’846 Patent col. 1 ll. 1–3 (“The present in- vention relates generally to shotguns and, more particularly to a retrofit magazine receiver for use with a conventional shotgun.”) (emphasis added); see alsoid.
col. 1 ll. 46–47 (“[T]he present invention is designed to be in- corporated into existing shotguns.”) (emphasis added). The specification also discloses that the invention al- lows a “shotgun owner,” not a manufacturer, to “upgrade” the receiver assembly of an existing conventional shotgun. Seeid.
col. 1 ll. 35–41 (“[M]any shotgun owners often choose to upgrade their existing weapons with new stocks and barrels as opposed to purchasing a new weapon. Ac- cordingly, it would be beneficial to provide a shotgun mag- azine receiver assembly which can replace the stock receiver of an existing shotgun to allow a user to rapidly fire and reload ammunition via a removable ‘box’ style magazine.”). Lemoine argues that these disclosures are merely ex- emplary and should not be read as limiting. In support, Lemoine points to common broadening language in the specification which states, for example, that: detailed embodiments of the present invention are disclosed herein; however, it is to be understood that the disclosed embodiments are merely exem- plary of the invention which can be embodied in various forms.Id.
col. 2 ll. 44–47. But as the district court correctly noted, the specification makes clear that this language is meant to ensure that the invention is broad enough to be used with different types and models of shotguns, not in different phases of production. See, e.g.,id.
col. 2 l. 64–col. 3 l. 9 (“As described herein, the term ‘shotgun’ can refer to Case: 20-2140 Document: 26 Page: 7 Filed: 09/15/2021 LEMOINE v. MOSSBERG CORPORATION 7 virtually any type and manufacturer of semi-automatic and/or shotguns. . . . Although illustrated in use with a MOSSBERG 500 shotgun, it is to be distinctly understood that the present invention has broader applications, and is equally applicable for use on many other shotguns without undue experimentation and without departing from the in- vention claimed.”). Moreover, neither the specification nor the claims include a single reference to the use of the claimed invention to manufacture a newly designed, or re- designed, shotgun with a box-style magazine. In light of these disclosures, we determine that the dis- trict court correctly held that a person of ordinary skill in the art, having read the claims in light of the specification and intrinsic record, would understand that within the meaning of the claims, “for converting a conventional shot- gun” means “for retrofitting a conventional shotgun after original manufacture.” CONCLUSION We conclude that the district court’s determination that the preamble of claim 1 of the ’846 Patent is limiting was on target, and that it correctly construed the preamble phrase “for converting a conventional shotgun,” to mean “for retrofitting a conventional shotgun after original man- ufacture.” Accordingly, we affirm. AFFIRMED
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Eaton Corporation v. Rockwell International Corporation and ... , 323 F.3d 1332 ( 2003 )
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Vitronics Corporation v. Conceptronic, Inc. , 90 F.3d 1576 ( 1996 )
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MARKMAN Et Al. v. WESTVIEW INSTRUMENTS, INC., Et Al. , 116 S. Ct. 1384 ( 1996 )