Insight Technology v . SureFire CV-04-074-JD 08/09/04 P UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Insight Technology Incorporated

v. Civil N o . 04-74-JD Opinion N o .

SureFire, LLC

REPORT AND RECOMMENDATION

Plaintiff Insight Technology Incorporated (“Insight”) is the

owner of U.S. Patent N o . 6,574,901 (“the ‘901 patent”), which is

entitled “Auxiliary Device for a Weapon and Attachment Thereof.”

Insight filed a complaint in this court alleging that defendant

SureFire, LLC (“SureFire”) was infringing Insight’s rights under

the ‘901 patent by, among other things, making, using, selling

and offering to sell weapon attachments that are covered by the

‘901 patent. Thereafter, Insight filed a motion for a

preliminary injunction (document n o . 1 0 ) , which was referred to

me for consideration and to prepare a report and recommendation.

SureFire filed an objection. The court held an evidentiary

hearing on the motion on July 1 4 , 2004. For the reasons set

forth herein, I recommend that Insight’s motion be denied. Standard of Review1

Federal district courts are authorized to grant injunctive

relief in patent cases under

. Reebok Int’l v . J.

Baker, Inc.,

(Fed. Cir. 1994). The grant or

denial of a preliminary injunction rests in the court’s sound

discretion. Tate Access Floors, Inc. v . Interface Architectural

Res., Inc.,

(Fed. Cir. 2002). The Federal

Circuit has cautioned that a preliminary injunction is a drastic

and extraordinary remedy that ought not be routinely granted.

Intel Corp. v . ULSI Sys. Tech., Inc.,

(Fed.

Cir. 1993). A request for a preliminary injunction should be

granted, however, if it is thoroughly justified. Polymer Techs.

v . Bridwell,

7 0 , 977 (Fed. Cir. 1996).

“To obtain a preliminary injunction in the district court,

the moving party must demonstrate a reasonable likelihood of

success on the merits, irreparable harm in the absence of a

preliminary injunction, a balance of hardships tipping in its

favor, and the injunction’s favorable impact on the public

interest.” Nat’l Steel Car, Ltd., v . Canadian Pac. Ry., Ltd.,

1 Federal Circuit law provides the standards for determining whether a preliminary injunction should issue against patent infringement under

. Hybritech Inc., v . Abbott Labs.,

, 1451 n.12 (Fed. Cir. 1988).

2

, 1324-25 (Fed. Cir. 2004) (citing Jack Guttman,

Inc. v . Kopykake Enters.,

(Fed. Cir. 2002);

Amazon.com, Inc. v . Barnesandnoble.com, Inc.,

(Fed. Cir. 2001)). The court must weigh and measure each

preliminary injunction factor against the other factors and

against the magnitude of the relief sought. Amazon.com,

(citing Hybritech Inc. v . Abbott Labs.,

(Fed. Cir. 1988)). A movant is not entitled to a

preliminary injunction if it cannot demonstrate a likelihood of

success on the merits or irreparable harm. Nat’l Steel Car, 357

F.3d at 1325; Amazon.com,

.

To demonstrate a likelihood of success on the merits here,

Insight must show that, in light of the presumptions and burdens

that will inhere at trial on the merits, (1) Insight will likely

prove that SureFire infringes the ‘901 patent, and (2) Insight’s

infringement claim will likely withstand SureFire’s challenges to

validity, enforceability and non-infringement of the ‘901 patent.

Amazon.com,

. “The burden is always on the

movant to show entitlement to a preliminary injunction.” Reebok,

. A preliminary injunction should not issue if

the court finds that SureFire has raised a substantial question

3 concerning either infringement or validity that Insight cannot

prove “lacks substantial merit.”

The party opposing a

preliminary injunction need not demonstrate clear and convincing

proof in order to sufficiently raise a substantial question.

Nat’l Steel Car, 357 F.3d at 1335; Amazon.com,

.

Background

Insight is a New Hampshire corporation with a place of

business in Londonderry, New Hampshire. Insight’s earliest

products were aiming lights for U.S. military rifles. Insight’s

success in that area led it to develop other weapon accessories

for the military market, and to produce weapon accessories for

the commercial market, including sales to U.S. law enforcement.

SureFire is a limited liability corporation with a principal

place of business in Fountain Valley, California. Since the

1980s, SureFire has dominated sales to the U.S. law enforcement

market of lights that attach to weapons.

Glock Ges.m.b.H (“Glock Austria”) and its U.S. subsidiary

Glock, Inc. (collectively “Glock”) are not parties to this

action, but they are important participants in its background.

Glock is the leading supplier of pistols to the U.S. law

enforcement market.

4 Kenneth Solinsky2 testified at the hearing that Insight was

contacted by Glock in the second half of 1996 after Glock saw an

opportunity to sell flashlights that attached to its pistols to

Austrian or German special forces. Glock was aware of Insight’s

work on a Universal Tactical Light for another firearms

manufacturer, Heckler & Koch, and of Insight’s work for the U.S.

Government on Laser Aiming Modules (“LAM”). Glock was interested

in having Insight develop a new white-light, rail-mounted

illuminator for Glock pistols.

Solinsky testified that when Glock representatives met with

Insight representatives Glock was already familiar with the use

of open and closed rails on weapons to mount attachments.

Solinsky testified that Insight suggested to Glock that open

rails had advantages over closed rails because it would be easier

to attach different devices to the weapon. Glock liked the idea

of using open rails, but did not like Insight’s proposal of

attaching its Laser Aiming Module 2 (“LAM-2") to the rail secured

by a thumbscrew through the trigger guard. According to

Solinsky, Insight suggested to Glock that it add a cross slot to

its design to prevent an attachment from sliding forward.

2 Solinsky is Insight’s President and a company founder.

5 Several weeks later, Glock Austria stated in a letter to

Christopher B . Edwards of Glock, Inc. that it wanted to use a

standard Weaver rail, fixation of the device in the longitudinal

axis by a notch rather than a thumbscrew, and a spring-tensioned

clamp or clip. See Pl.’s Ex. 1 0 . Edwards was asked to follow up

with Insight on these design modifications and to obtain a price

quote for 50 prototypes.

Solinsky testified that when Insight received a drawing from

Glock that included a cross slot, Insight observed that the cross

slot was good, but that it was in the wrong location. Solinsky

testified that Insight suggested that Glock move the cross slot

further back on the pistol, which Glock did. Glock’s eventual

pistol frame design had open-ended rails mounted under the pistol

barrel with a cross slot or transverse notch on the underside,

forward of the trigger guard.

Insight’s designers, Solinsky, Albert LePage and Wallace

Woodman, subsequently developed a mechanism for attaching a

tactical illuminator3 to a weapon, which is the subject of the

3 Solinsky testified that a tactical illuminator is basically a high performance flashlight.

6 ‘901 patent. Pl.’s Ex. 1.4 Insight refers to its attachment

mechanism as the Slide-Lock™ mounting system. Insight introduced

its first product having the Slide-Lock™ mounting system, the M3

Tactical Illuminator (the “ M 3 " ) , in 1998. See Pl.’s Ex. 4 .

SureFire received a letter from Glock in July 1997

indicating that Glock had completed development of its rail

design, and requesting that SureFire develop prototype pistol

accessories. Df.’s Ex. U . Glock’s letter mentioned a number of

features that Glock sought for a light attachment including:

“easy ambidextrous use,” and “easy/quick mounting on frame (click

on solution - simple/quick removal).”

John W . Matthews5 testified that when he learned of Glock’s

proposal to use a notched, open rail with a “click-on” solution

he immediately envisioned a spring-loaded mechanism known as a

detent, which would force a bar or projection of some type into

the notch on the rail. Detents are a commonly used engineering

solution to fix the position of attachments. See Df.’s Ex. Z .

Matthews testified that Paul Kim, SureFire’s Vice President of

Engineering, immediately came up with something similar to

4 Exhibit citations refer to the exhibits introduced into evidence during the preliminary injunction hearing. 5 Matthews is SureFire’s President and a company founder.

7 Insight’s M3 device after SureFire received a sample from Glock.

At his deposition, taken prior to the evidentiary hearing,

Paul Kim testified that he and Matthews discussed how SureFire

should approach developing a prototype for a light that would

attach to a Glock pistol in response to the July 1997 letter and

a sample that SureFire received from Glock. Pl.’s Ex. 18

(Transcript of the Deposition of Paul Y . Kim dated June 1 0 , 2004)

at 14:13-23. Kim thought that using a spring-loaded latching

system was obvious for any typical rail glide system. Id. at

15:11-22. One of the initial designs that Kim contemplated was a

T-shaped structure that Kim envisioned working with the Glock

rail. Id. at 17:12-18. The mechanism would have a spring bias

below wherein the user would “pull down and it would disengage,

or if you let go it would engage.” Id. at 18:1-8.

The prototype that SureFire eventually developed had “two

rail pieces parallel on the top side of the light, and in the

middle there is a spring loaded piece which has a raised edge at

one end and that raised edge interfaces with a notch on the

underside of the gun.” Id. at 20:24-21-4. Kim agreed that “the

two pieces slide onto the rails onto the gun and then the spring

loaded piece in the middle engages with the notch in the

8 underside of the gun.” Id. at 21:5-8. Kim further agreed that

there were two handles at the back of the light that were used to

release the spring-loaded piece from the notch to remove the

light from gun. Id. at 21:10-14. Following SureFire’s receipt

of Glock’s proposal, SureFire developed its prototype into a

commercial product that would attach on rails mounted on a Glock

pistol. Id. at 38:25-39:16. SureFire did not see Insight’s

design until both SureFire and Insight displayed their prototypes

at the same SHOT show in January or early February 1998.6

The evidence showed that another company, Wilcox Industries,

independently developed a weapon attachment with an upwardly

biased, spring-loaded bar or projection to fix its position to a

Glock pistol. See Df.’s Ex. S (Transcript of the Deposition of

Albert LePage, J r . dated May 1 9 , 2004) at 46:11-50:16, and Df.’s

Ex. O . The Wilcox-designed device had two tabs that came out to

compress the spring. Df.’s Ex. S at 47:8-12 and 47:21-48:2.

Wilcox also displayed its device at the SHOT Show in early 1998.

Matthews testified that SureFire pulled its product, called

the M110, off the market after learning of a malfunction with

6 Alan T . Howe, Insight’s Director of Commercial Business Development, testified that the SHOT (Shooting, Hunting and Outdoor Trade) Show is the largest consumer and commercial gun show in the United States

9 Glock’s product. Matthews testified that Glock pistols are

generally known for experiencing very few malfunctions.

SureFire’s testing demonstrated that there was a problem with

Glock’s magazine that caused it to malfunction when it was used

with the M110. Matthews testified that SureFire’s testing also

showed that Glock pistols experienced firing malfunctions when

used with Insight’s product although there were fewer

malfunctions because Insight’s product was smaller. SureFire’s

testing showed that the heavier the attachment, the higher the

likelihood that were would be a malfunction. Matthews testified

that for purposes of officer safety, SureFire decided to cede the

market to Insight and put out a warning that there was a

possibility that there would be a malfunction problem if anything

was mounted to a Glock rail.

According to Matthews, Glock later represented that it fixed

the problem with its magazines. SureFire now manufactures,

markets, and sells the X200 Weapon Light (the “X200"), the

accused device, which can be attached to a Glock pistol. See P l .

Ex. 5 . SureFire began marketing the X200 in the fall of 2003,

and began selling it in January 2004. The X200 competes directly

with Insight’s M 3 .

10 Insight alleges that SureFire’s X200 is a “knock off” of

Insight’s M 3 . Insight alleges that SureFire intentionally copied

the M3 design after Insight’s substantial efforts to turn the M3

into a commercial success began to bear fruit. Insight seeks a

preliminary injunction to enjoin further sales of the X200

asserting that Insight will suffer irreparable harm in the form

of lost goodwill and market share if SureFire continues to

infringe the ‘901 patent.

SureFire denies Insight’s allegation that the X200 is a

knock off of the M 3 . Matthews testified that the X200 is an

evolution in weapon light design that uses better technology,

costs more to produce, and sells for a higher price than the M 3 .

Paul Kim, the designer of the X200, admitted at his deposition

that he saw the M3 before he designed the X200, but he testified

that he did not refer to the M3 while working on X200 design.

In opposition to Insight’s motion for injunctive relief,

SureFire primarily argues that Insight is not likely to succeed

on the merits because the ‘901 patent is invalid either because

it was anticipated by the prior art, or because the subject

matter was obvious to persons having ordinary skill in the art at

the time the invention was made. Additionally, SureFire argues

11 that the ‘901 patent is unenforceable because Insight withheld

relevant prior art from the patent examiner, and that even if the

‘901 patent is not invalid or unenforceable, the X200 does not

infringe any claim of the ‘901 patent.

In the discussion that follows, the Court first considers

Insight’s infringement claim, and then considers SureFire’s

arguments that the ‘901 patent is either invalid or

unenforceable.

Discussion

I. Infringement

“Infringement analysis involves two steps: the court first

construes the scope of the asserted claims and then compares the

accused device to the properly construed claims to determine

whether each and every limitation of a claim is present, either

literally or equivalently, in the accused device.” Tate,

(citing Amazon.com,

; Kahn v . GMC,

(Fed. Cir. 1998)). Claim interpretation

begins with the language of the claims. Tate,

.

This court “must presume that the terms in the claim mean what

they say, and, unless otherwise compelled, give full effect to

the ordinary and accustomed meaning of claim terms.”

12 (quoting Johnson Worldwide Assocs. v . Zebco Corp.,

(Fed. Cir. 1999) (additional citations omitted)).

For purposes of the motion for a preliminary injunction,

Insight asserts that SureFire’s X200 infringes claims 1 , 1 0 , 1 1 ,

and 28 of the ‘901 patent. The Court next construes the asserted

claims, and then compares those claims to the accused device.

A. Claim 1

The text of claim 1 , with construed claim terms emphasized,

is as follows:

1 . An auxiliary device for use with a weapon, the auxiliary device comprising:

a housing:

at least one source of illumination located within the housing;

a first structural member extending upward from a first side of the housing and extending along at least a portion of the length of the first side of the housing;

a second structural member extending upward from a second side of the housing, wherein the second side of the housing is located opposite to the first side of the housing, and wherein the second structural member extends along at least a portion of a length of the second side of the housing such that it is substantially parallel to the first structural member, and wherein both the first and second structural members are substantially parallel to a central, longitudinal axis extending along a length of the housing; and

a spring-biased mechanism extending across and along a top surface of the housing, and wherein the spring-biased

13 mechanism is configured to be biased in a direction normal to the top surface of the housing.

‘901 patent, col. 1 0 , l . 49--col. 1 1 , l . 2 (emphasis added). The

Court is persuaded that Insight is likely to succeed in showing

that every limitation of claim 1 is found in the X200.

There is no dispute that the X200 is an auxiliary device for

use with a weapon. Consistent with claim 1 of the ‘901 patent,

the X200 has a housing. The X200 housing meets the limitation of

claim 1 that the housing have “at least one source of

illumination located within the housing” because the X200 has a

light-emitting diode (“LED”) as an illumination source. The X200

meets the limitation of claim 1 of having two structural members

that extend upward from and along opposite sides of the housing

so that they are both substantially parallel to a central,

longitudinal axis. The two parallel structural members of the

X200 run along the top of the housing enabling it to slide onto

rails on a weapon. The X200 further meets the limitation of

having a spring-biased mechanism that extends across and along

the top of the housing and is biased in a normal direction to the

top of the housing. See Pl.’s Exs. 5 , 1 4 , and 1 5 .

SureFire argues that Insight cannot establish a likelihood

of success on the infringement issue because the X200 does not

14 have a spring-biased mechanism “extending across and along a top

surface of the housing.” See Df.’s Mem. In Opp. at 1 7 . SureFire

argues the term “along” should be read to require direct contact

with the top surface of the housing. This is s o , according to

SureFire, because as used with regard to other aspects of the

‘901 patent, features that are described as “along” each other

are in direct contact. SureFire further argues that since the

spring-biased plate on the X200 pivots about a pin near the back

of the unit, and the free end of the plate is supported by the

spring, the spring-biased mechanism does not come into direct

contact with the housing. Therefore, according to SureFire, the

X200 does not literally infringe the ‘901 patent.

Insight replies that SureFire does not deny that the X200

has a spring-biased plate that rests above and largely covers the

length of the top surface of its housing, which is consistent

with the ordinary meaning of “along.”7 Insight argues that

7 In support of its reply, Insight cites The American Heritage® Dictionary of the English Language (4th ed. 2000) (first definition of “along”: “Over the length o f : walked along the path”; second definition of “along”: “On a line or course parallel and close t o ; continuously beside: rowed along the shore; the trees along the avenue.”). The Court further notes the similar definitions of “along” in Webster’s Third New International Dictionary 60 (1993) (first definition of “along”: “over the length of (a surface)”; second definition (entry 2 a ) : “in a line parallel with the length or direction.”).

15 SureFire’s preferred construction of the claim term “along” as

meaning “in direct contact” should not be adopted by this court

because it is contrary to the ordinary and accustomed meaning of

the term and is not found in any dictionary. The Court agrees.

SureFire has not pointed to any evidence that Insight chose

to become its “own lexicographer by clearly and explicitly

defining the claim term,” nor that the claim term “along” is

devoid of clarity such that there is “no means by which the scope

of the claim may be ascertained from the language used.” Tate,

(citing Bell Atl. Network Servs., Inc. v . Covad

Communs. Group, Inc.,

, 1269 (Fed. Cir. 2001)

(additional citation omitted)). Therefore, SureFire has not

overcome the strong presumption in favor of adopting the ordinary

meaning of claim language. Tate,

.

Insight further argues that SureFire’s construction of the

term “along” is incorrect because it would exclude not only the

X200, but also the preferred embodiment of the invention claimed

in the ‘901 patent because, as shown in Figure 6 of the patent,

there is a gap between the spring-biased mechanism and the top

surface of the housing. See NeoMagic Corp. v . Trident

Microsystems, Inc.,

(Fed. Cir. 2002) (“It is

16 elementary that a claim construction that excludes the preferred

embodiment ‘is rarely, if ever correct and would require highly

persuasive evidentiary support.’”). SureFire did not rebut this

argument.

The Court finds that Insight has sufficiently demonstrated

that SureFire’s non-infringement argument lacks substantial

merit. Accordingly, the Court finds that Insight is likely to

succeed in demonstrating that every limitation of claim 1 , or its

equivalent, may be found in the X200.

B. Claims 1 0 , 11 and 28

The text of claims 1 0 , 11 and 28 is as follows:

1 0 . The auxiliary device of claim 1 , wherein the spring- biased mechanism comprises a positioning member.

1 1 . The auxiliary device of claim 1 0 , wherein the positioning is in the form of a spring-loaded bar.

2 8 . The auxiliary device of claim 1 , where in the spring- biased mechanism includes a portion, which upon manipulation by a user, overcomes the bias provided by the spring-biased mechanism.

‘901 patent, col. 1 1 , l l . 27-39--col. 1 2 , l l . 25-28.

For purposes of the motion for a preliminary injunction,

SureFire has not argued that the X200 does not have the

limitations of claims 1 0 , 11 and 2 8 . See Df.’s Mem. In Opp. at

17-18. Based on the Court’s review of Solinsky’s testimony at

17 the evidentiary hearing and the exhibits (see Pl.’s Exs. 4 , 5 , 14

and 1 5 ) , the Court finds that Insight is likely to succeed in

demonstrating that each claim limitation, or its equivalent, of

claims 1 0 , 1 1 , and 28 may be found in the X200.

II. Patent Validity

Under

8 2 , a patent is presumed valid. “[T]his

presumption exists at every stage of the litigation.” Canon

Computer Sys. v . Nu-Kote Int’l,

(Fed. Cir.

1998) (citations omitted). The party asserting that a patent, or

any claim thereof, is invalid has the burden of establishing

invalidity.

. The statutory presumption of

validity, however, does not relieve the patentee of its

obligation to demonstrate likelihood of success at trial on the

validity issue where the opposing party identifies persuasive

evidence of invalidity. Canon,

; Oakley, Inc. v .

Sunglass Hut Int’l,

(Fed. Cir. 2003).

A. Obviousness of Invention

A patent should not issue “if the differences between the

[claimed invention] and the prior art are such that the subject

matter as a whole would have been obvious at the time the

invention was made to a person having ordinary skill in the art.”

18

(a). The obviousness determination is a legal

conclusion based on factual evidence. Tec Air, Inc. v . Denso

Mfg. Mich. Inc.,

, 1359 (Fed. Cir. 1999).

In order to establish a prima facie case of obviousness,

SureFire is required to show “some objective teaching in the

prior art or that knowledge generally available to one of

ordinary skill in the art would lead that individual to combine

the relevant teachings of the references.” Tec Air, 192 F.3d at

1359 (quoting In re Fine,

(Fed. Cir. 1988)).

A motivation to combine may also flow from the nature of the

problem to solved. Pro-Mold & Tool C o . v . Great Lakes Plastics,

(Fed. Cir. 1996) (citing In re Rinehart,

(C.C.P.A. 1976)).

“A determination of obviousness must involve more than

indiscriminately combining prior art.” Micro Chem., Inc. v .

Great Plains Chem. Co.,

(Fed. Cir. 1997). To

avoid impermissible hindsight-based obviousness analysis, the

court must rigorously apply the requirement for a showing of a

teaching or motivation to combine prior art references. See

Ecolochem, Inc. v . Southern Cal. Edison Co.,

(Fed. Cir. 2000) (citing In re Dembiczak,

9 4 , 999 (Fed.

19 Cir. 1999), abrogated on other grounds by In re Gartside,

(Fed. Cir. 2000)); see also Amazon.com,

(the relevant inquiry on obviousness is “what a hypothetical

ordinarily skilled artisan would have gleaned from the cited

references” at the time that the patent application was filed).

The determination of what a prior art reference teaches is a

question of fact. Amazon,

. “There is no

suggestion to combine . . . if a reference teaches away from its

combination with another source.” Tec Air, 192 F.3d at 1360. A

reference teaches away if when upon reading the reference a

person of ordinary skill “would be discouraged from following the

path set out in the reference, or would be led in a direction

divergent from the path that was taken by the applicant . . .

[or] if it suggests that the line of development flowing from the

reference’s disclosure is unlikely to be productive of the result

sought by the applicant.” Id. (quoting In re Gurley,

(Fed. Cir. 1994)).

A prima facie case of obviousness may be rebutted by

objective evidence of non-obviousness. Tec Air, 192 F.3d at

1360. Such evidence includes commercial success of the invention

and a showing of a long-felt unsolved need. Id. “Whether the

20 evidence presented suffices to rebut the prima facie case is part

of the ultimate conclusion of obviousness and is therefore a

question of law.” Id. (quoting In re Rouffet,

(Fed. Cir. 1998)).

1. Evidence of Obviousness

a. Objective Teaching in the Prior Art

SureFire argues that there are multiple prior art references

establishing the invention claimed in the ‘901 patent. SureFire

cites (1) the SUSAT8 universal mount; (2) information provided in

correspondence and accompanying diagrams from Glock Austria and

Glock, Inc. to Insight between May 14 and June 1 0 , 1997 (“the

Glock documents”); (3) Insight’s SOCOM LAM; (4) U.S. Patent N o .

5,685,105 (“the ‘105 patent”); and (5) U.S. Patent N o . 4,825,744

(“the ‘744 patent”). SureFire argues that these five prior art

references can be combined in a variety of ways to demonstrate

obviousness. SureFire further argues that Glock provided the

motivation and suggestion to combine the identified references by

defining the problem as one of fixing the position of a light on

a pistol with a notched, open rail, so that the attachment will

easily click on and off.

8 SUSAT stands for Sight Universal Small Arms Trilux. Df.’s Ex. X .

21 i. SUSAT Mounting System

The first prior art reference SureFire cites is the SUSAT

rifle scope developed by United Scientific Instruments, Ltd.

(“USI”). See Df.’s Ex. W . SureFire offers hearsay evidence that

the SUSAT uses a “universal mount” to attach to a standard

“Picatinny” rail using a spring-loaded plunger with a transverse

bar on the end.

The transverse bar engages a notch on the

mounting rail.

According to an individual identified as

M . I . Cooper, the SUSAT mounting system was designed in the early

1980s and was demonstrated in the United States at a military

base in the mid-1980s.

SureFire contends that not only does

the SUSAT teach the invention of the ‘901 patent, it also

anticipates every element of claims 1 , 1 0 , 1 1 , and 2 8 .

In response, Insight first argues that SureFire’s evidence

concerning the SUSAT is inadmissible. Second, Insight argues

that, even if SureFire’s evidence is admissible, it does not

establish that the SUSAT is prior art. Third, Insight argues

that SureFire’s evidence does not demonstrate that the particular

SUSAT design it claims was anticipatory was used in the U.S. in

the mid-1980s. Fourth, Insight argues that even if the

particular version of the SUSAT on which SureFire relies was

22 publicly used in the U.S., it fails to meet multiple limitations

of the asserted claims, and thus does not anticipate them. And

fifth, Insight argues that the SUSAT has no “source of

illumination,” because it is a scope not an illuminator.

Although the Court overruled Insight’s objection to

SureFire’s evidence pertaining to the SUSAT device,9 the Court

finds the weight of that evidence is limited. Furthermore, based

on the Court’s review of the evidence, the Court agrees with

Insight’s argument that there are a number of differences between

the SUSAT and claims 1 , 1 0 , 11 and 28 of the ‘901 patent.

Contrary to the asserted claims, the SUSAT’s structural members

that glide onto rails extend downward from the housing not

upward. The SUSAT’s structural members also do not extend from a

side of the housing, but rather are on a separate piece called a

“universal mount.” The universal mount is in turn attached to

the SUSAT and to the weapon. Furthermore, the SUSAT’s spring-

biased mechanism is located on the bottom surface of the

9 The Court overruled Insight’s hearsay objection based on the relaxed evidentiary standard used in preliminary injunction hearings. See Asseo v . Pan Am. Grain Co.,

3 , 26 (1st Cir. 1986) (finding that hearsay materials may be received in preliminary injunction proceedings if the court finds that the evidence is appropriate given the character and objectives of the injunctive proceeding).

23 universal mount, not the top surface of the SUSAT’s housing. And

the SUSAT does not have a source of illumination -- meaning “a

device generally devised to cast light upon a target area or a

portion thereof” -- as described in the ‘901 patent. See P l . Ex.

1 at col. 6, lines 8-9. Because of the limited weight given to

SureFire’s evidence pertaining to the SUSAT mounting system, and

because the evidence does not fully disclose all of the elements

of the asserted claims, the Court finds that SureFire has not

raised a substantial question that the SUSAT anticipates claims

1 , 1 0 , 11 and 28 of the ‘901 patent.

Despite the identified differences between the asserted

claims and the features of the SUSAT, the Court nonetheless finds

that there are substantial similarities between them, namely

attachment of the device to a standard weapon rail, the use of a

spring-biased mechanism (a plunger) with a transverse bar, and

engagement of the transverse bar with a notch on the mounting

rail. The Court finds that these teachings of the SUSAT are

relevant in determining whether, in combination with other prior

art references, the asserted claims were obvious to a person

having ordinary skill in the art at the time that the application

for the ‘901 patent was filed.

24 ii. Glock Documents

SureFire argues that the information in the Glock documents

shows that Glock Austria conceived of attaching a light to its

pistols using a spring-tensioned clip fitted into a notch on the

underside of a standard rail prior to May 1 7 , 1997. See Df.’s

Ex. D-G. Insight responds that all the Glock documents show is a

pistol with a standard set of rails with a transverse slot across

them. Thus, Insight argues, Glock did not disclose or describe

any specific auxiliary device.

Insight further argues that the Glock documents actually

teach away from the claimed invention in that Glock advised that

“we need/prefer a clamp/clip” to fix the device on the weapon.

The evidence showed that the “clamp” feature suggested by Glock

referred to an attachment mechanism that is different from the

claimed invention. Paul Kim acknowledged in his testimony that a

lateral clamp mechanism provides a “click-on solution” and allows

“easy and quick” mounting of a light to a gun with rails. Pl.’s

Ex. 18 at 35:19-36:11. Kim further testified that there were

many different ways that could have been used to attach a device

to Glock’s pistol once they added rails with a cross slot. Id.

at 109:22-113:15. Based on a review of the evidence, the Court

25 agrees with Insight’s conclusion that the Glock documents did not

dictate Insight’s invention.

The evidence shows, however, that Glock presented the

problem of developing a light to attach to rails mounted on the

underside of its pistols to Insight and others, including

SureFire. In so doing, Glock presented a motivation to companies

producing complementary products to search for a solution.

Although Glock representatives did indicate that “we need/prefer

a clamp/clip” to fix the device on the weapon, the evidence shows

that Glock prompted vendors to be creative, and affirmatively

ruled out only Insight’s proposal to the use of a thumbscrew or

fixation wheel as a means of fixing the device to the weapon.

See Df.’s Ex. D & F. The Glock documents are relevant in

determining the issue of whether the claims asserted in the ‘901

patent were obvious in that Glock provided a motivation to

persons of ordinary skill in the art to solve the problem of

designing a rail-mounted light for its pistols. Having settled

on a pistol design with a standard rail and a transverse notch or

cross slot forward of the trigger guard, Insight, SureFire and

others had a motivation to combine the relevant teaching of the

prior art to develop the best solution for Glock.

26 iii. Insight’s SOCOM LAM Battery Pack

In or about 1992, Insight developed a new battery pack

designed to slide onto rails on the bottom of its LAM. Df.’s Ex.

P (Transcript of the Deposition of Wallace E . Woodman, III dated

May 2 0 , 2004) at 88:5-96:7. Approximately thirty of these

battery packs were produced and sold to the U.S. military unit

known as SOCOM. Id.; see also, Df.’s Ex. Q (Transcript of the

Deposition of Kenneth Solinsky dated May 2 0 , 2004) at 87:1-91:13.

Although acknowledging that the SOCOM LAM did not have a “source

of illumination located within the housing,” SureFire argues that

the SOCOM LAM disclosed all of the other elements of claims 1 ,

1 0 , 11 and 28 of the ‘901 patent.

Insight responds that the SOCOM LAM is only relevant in that

it contains an attachment of a battery pack to a LAM that is in

turn screwed onto a gun. Insight argues that attaching a battery

pack to an auxiliary device presents a far different problem than

attaching an auxiliary device directly to a gun. Therefore,

Insight argues that the SOCOM LAM cannot be considered highly

relevant prior art as SureFire contends. This argument has some

force. That the SOCOM LAM battery pack is not itself an

auxiliary device that attaches to a weapon greatly limits its

27 persuasive value. The Court finds that SureFire has not

presented a credible argument that persons of ordinary skill in

the art had a motivation to combine the teachings of the SOCOM

LAM battery pack in combination with other prior art references

rendering the asserted claims obvious.

iv. The ‘105 patent

SureFire argues that the ‘105 patent discloses a flashlight

that attaches to the underside of the barrel of a pistol via a

rail. The flashlight is locked into position on the rail by a

spring-loaded pin, rather than a bar or projection, that clicks

into a hole in the frame. To remove the flashlight, a lever is

depressed that compresses the spring and thus pulls the pin out

of the positioning hole. The spring-loaded pin is biased upward

from the housing of the light. SureFire argues that the ‘105

patent includes every element of claims 1 , 1 0 , 11 and 28 of the

‘901 patent except the requirement in claim 1 that the spring-

biased mechanism extend “across” a top surface of the housing.

Insight responds that the evidence shows that the patent

examiner considered the invention disclosed in the ‘105 patent

and simply did not deem that reference material enough to apply

it against the ‘901 patent claims. Therefore, the ‘105 patent is

28 not persuasive evidence supporting a finding of obviousness.

In further support of its non-obviousness argument, Insight

argues that SureFire provides no reason why Glock’s gun would not

be modified to use the ‘105 patent’s spring-loaded pin, rather

than abandoning that technique. Nor has SureFire explained why a

spring-loaded bar would be adopted rather than some other

mechanism such as the side clamping mechanism suggested by Glock.

Neither party has presented evidence pertaining to the

relative advantages or disadvantages, from a mechanical

engineering standpoint, of using a spring-loaded pin in contrast

to a spring-loaded bar or projection, or of using a positioning

hole in contrast to a transverse cross slot or notch. And the

patent examiner certainly did not find that the ‘105 patent

rendered the claims in the ‘901 patent obvious. However, the

Court finds that the ‘105 patent is relevant prior art in that it

teaches the use of a spring-biased mechanism in conjunction with

a positioning member to fix the position of a weapon attachment.

Therefore, the Court considers the ‘105 patent in weighing the

evidence on SureFire’s obviousness claim.

v . The ‘744 patent

The ‘744 patent discloses a mechanism on a pistol for fixing

29 the gun’s slide and barrel in a predetermined position on the

frame. It discloses the use of a spring-biased bar that presses

up into a notch in the barrel to lock a gun’s slide and barrel in

place, and a release that compresses the spring so the slide and

barrel can be removed. SureFire argues that the ‘744 is closely

analogous prior art suggesting the use of a spring-biased

position fixing mechanism with a bar that fits into a notch on a

pistol.

Insight responds that the ‘744 patent has nothing to do with

attaching a device to a gun. Rather, as SureFire acknowledges,

the ‘744 patent “discloses a mechanism on a pistol for fixing the

gun’s slide and barrel in a predetermined position.” If the ‘744

patent were combined with the Glock documents it would not have

resulted in attaching any device to Glock’s guns, and therefore

could not be interpreted as suggesting the particular manner of

Insight’s invention. As with Insight’s argument pertaining to

the value of the evidence pertaining to the SOCOM LAM battery

pack, that the ‘744 patent does not pertain to an auxiliary

device that attaches to a weapon renders it of little persuasive

value in the Court’s obviousness analysis.

Considering each of the five identified prior art

30 references, the Court is not persuaded that the prior art teaches

the invention in the asserted claims. The Court does find,

however, that the Glock documents provided a motivation to

combine the relevant teachings of the SUSAT and the ‘105 patent

in developing an acceptable solution for Glock. The Court

continues the obviousness inquiry by considering knowledge

generally available to those of ordinary skill in the art.

b . Knowledge Generally Available

Apart from showing objective teachings in the prior art,

SureFire can establish a prima facie case of obviousness if it

can show “that knowledge generally available to one of ordinary

skill in the art would lead that individual to combine the

relevant teachings of the [prior art] references.” Tec Air, 192

F.3d at 1359. The parties agree that standard Weaver or

Picatinny weapon rails with transverse slots or notches have been

used for decades. The evidence further showed that the use of a

detent is a common engineering solution to the problem of fixing

two objects together. See Df.’s Ex. Z . SureFire argues that

because the market for weapon attachments is driven primarily by

the desires of firearms manufacturers there was simply no

motivation to develop a design for a pistol such as that claimed

31 by Insight in the ‘901 patent prior to Glock’s request to

vendors. Once that motivation was provided, SureFire argues, the

invention claimed by Insight was obvious. In light of the

relevant teachings from the prior art discussed above, and the

knowledge generally available pertaining to the use of spring-

biased mechanisms, the Court finds that SureFire has presented at

least a prima facie case of obviousness with regard to the

asserted claims. The Court considers the evidence on secondary

considerations in the obviousness inquiry next.

2. Secondary Indicators of Non-obviousness

Secondary indicators of non-obviousness include commercial

success, long felt but unsolved needs, failure of others to make

the invention, whether there was simultaneous invention, and

whether there is evidence of copying and acclamation. Ecolochem,

. The court weighs all of the secondary

considerations to determine whether the evidence supports the

conclusion that the asserted claims were obvious.

a. Commercial Success

Insight contends that the commercial success of Insight’s

Slide-Lock™ devices in the marketplace is strong evidence of non-

obviousness. The evidence shows that Insight’s sales of Slide-

32 Lock™ devices grew nine times from 1999 to 2003, and that Insight

projects that its 2004 sales will represent an increase of more

than 40% in comparison with 2003 sales. See Pl.’s Exs. 2-3.10

Insight argues that this evidence entitles it to a presumption

that its patented invention is commercially successful. See

Ecolochem,

(a showing of significant sales in a

relevant market, and that the successful product is the invention

disclosed in the patent, supports a finding that the patented

invention is commercially successful).

SureFire argues in response that the commercial success of

Insight’s products is not an indicator of non-obviousness because

Insight’s products were successful only because there were no

viable competing products after SureFire voluntarily withdrew

from the market. SureFire further argues that because Insight’s

10 Insight’s Alan Howe identified a number of factors that he believed contributed to the success of Insight’s Slide-Lock™ devices in the marketplace including: (1) increased presence with key distributors; (2) appreciation by end users of the compact overall size and weight of Insight’s product; (3) appreciation by end users of the ambidextrous access to the switch; (4) the maturity of Insight’s advertising campaign; and (5) the number of guns with which the products could be used. Howe testified that the unique attachment mechanism of Insight’s Slide-Lock™ devices gave it a means to distinguish itself from SureFire, and to overcome the brand loyalty that SureFire had developed as the dominant player in the U.S. law enforcement market.

33 success was attributable in part to more firearms being

manufactured that could accommodate Insight’s design the court

should find that there is not a sufficient nexus between the

commercial success of Insight’s products and the patented

invention. The Court disagrees.

Considering evidence presented at the hearing, the Court is

persuaded that Insight’s products were a commercial success due

primarily to Insight’s efforts to make potential customers

familiar with its patented attachment mechanism. Accordingly,

the Court finds that the commercial success factor weighs in

Insight’s favor on the obviousness issue.

b. Long-felt But Unsolved Needs

Matthews testified that the market for weapon attachments

has largely been dictated by the desires of firearms

manufacturers. The evidence shows that when Glock presented the

problem of how to attach a tactical light to an open rail with a

notch or transverse cross slot that three companies, Insight,

SureFire, and Wilcox, developed solutions in the same time frame

incorporating similar design features. Accordingly, the Court

finds that the evidence does not support a finding that a long-

felt, but unsolved need, existed.

34 c. Failure of Others to Make Invention

There was no evidence presented at the hearing of

unsuccessful attempts by others to make the invention claimed in

the ‘901 patent. Therefore, the Court does not find that this

factor supports a finding of non-obviousness.

d. Simultaneous Invention

Matthews testified that when SureFire received the drawing

from Glock depicting a pistol design with open rails and a cross

slot he thought that using a detent was an obvious solution. The

device designed by SureFire’s Paul Kim had a spring-loaded bar

similar to Insight’s M 3 . In developing its products, SureFire

did not have access to Insight’s products or Insight’s

development process. SureFire developed and sold the M110, and a

device it called the P110, before the ‘901 patent issued. During

the hearing, Matthews opined that because of the similarity in

the functions employed if the X200 infringes the ‘901 patent then

so did the M110.

The evidence further showed that Wilcox Industries

independently developed a device with structural members that

attached to rails, and an upwardly biased, spring-loaded bar or

projection to fix its position to a Glock Pistol. The device

35 also had two little tabs that came out to compress the spring.

These are features that, if proven, would likely infringe the

asserted claims of the ‘901 patent. Wilcox presented its product

at the same SHOT Show where Insight and SureFire first displayed

their products.

“The fact of near-simultaneous invention, though not

determinative of statutory obviousness, is strong evidence of

what constitutes the level of ordinary skill in the art.”

Ecolochem,

(quoting Int’l Glass C o . v . United

States,

(1969)); see also, Stewart-Warner Corp.

v . City of Pontiac, Mich.,

(Fed. Cir. 1985)

(development by others may be pertinent to a determination of

obviousness of an invention where the evidence presented is of

activities occurring prior to the filing of the patentee’s patent

application). The court must determine whether near simultaneous

invention by two or more equally talented inventors working

independently is an indication of obviousness in light of all the

circumstances. Ecolochem,

.

SureFire argues that the conclusion that the claims asserted

by Insight in this litigation were obvious is strongly supported

by the results of three companies working independently on a

36 problem simultaneously developing similar solutions. Each

company apparently produced a weapon attachment that uses a

spring-biased mechanism that puts a projection up into a cross

slot. Furthermore, each device had parallel structural members

that slid onto open rails on a Glock pistol. SureFire asserts

that there is an open question as to which entity came up with

the design first. The Court finds this argument persuasive.

Insight has no answer to SureFire’s simultaneous invention

argument. Insight suggested during the hearing that Glock may

have provided information about Insight’s design to SureFire and

Wilcox prior to the SHOT Show in early 1998. SureFire disputes

this suggestion, and no evidence was offered supporting Insight’s

supposition.

e. Copying and Acclamation

SureFire denies that it copied Insight’s M3 design. It

asserts that SureFire developed its own spring-biased mechanism

for the M110 in 1997 simultaneously and independently of Insight.

SureFire further asserts that the X200 represents an evolution in

weapon light design that is based on advances in technology.

Apart from Insight’s allegations in this action, Insight has not

presented evidence that others have copied its design. Moreover,

37 Insight has not offered evidence that there has been public

acclamation for the M 3 . The Court finds that the copying and

acclamation factors do not support a finding of non-obviousness.

3. Weighing of the Factors

Based on the evidence presented during the hearing, the

Court finds that SureFire has raised a substantial question that

the claims in the ‘901 patent asserted by Insight were obvious.

In particular, the Court is most persuaded by the evidence of

Glock providing a motivation to combine the teachings of relevant

prior art references, knowledge generally available about the use

of spring-biased mechanisms to fix objects in combination with

rails, and the strong evidence of near simultaneous invention by

three companies. The Court finds that Insight has not

demonstrated that SureFire’s obviousness argument lacks

substantial merit.

B. Anticipation By Prior Art

For the reasons set forth above in discussing the

differences between the SUSAT and the asserted claims, the Court

finds that SureFire has not raised a substantial question

regarding the validity of the ‘901 patent due to anticipation by

the SUSAT.

38 III. Inequitable Conduct During Prosecution

In addition to arguing that the ‘901 patent is invalid,

SureFire argues that Insight’s patent is likely unenforceable.

Having reviewed the evidence, the Court is not persuaded that

SureFire has demonstrated that Glock Austria conceived of all of

the key features of the invention claimed in the ‘901 patent.

The documents produced by Glock show a pistol with a standard set

of rails with a transverse notch or cross slot. Although Glock

did express a preference for a spring-tensioned clamp or clip

with regard to lateral fixation of the device, Pl.’s Ex. 1 0 ,

there is no evidence that Glock disclosed or described the

auxiliary device that Insight claimed in the ‘901 patent.

The Court further finds conclusory and unpersuasive

SureFire’s argument that Insight intentionally failed to disclose

the SOCOM LAM battery pack and the Glock Documents, which,

according to SureFire, a reasonable patent examiner would

consider “critically important” in deciding whether to allow the

‘901 patent. Accordingly, the Court does not find that SureFire

has raised a substantial question that the ‘901 patent is likely

unenforceable.

39 The Court finds that Insight has not demonstrated that it is

likely to succeed on the merits because SureFire has raised a

substantial question as to whether the asserted claims were

obvious. Accordingly, the Court need not consider the remaining

preliminary injunction factors. See Reebok,

.

Conclusion

For the reason set forth above, I recommend that Insight’s

motion for a preliminary injunction (document n o . 10) be denied.

Any objections to this Report and Recommendation must be

filed within ten (10) days of receipt of this notice. Failure to

file objections within the specified time waives the right to

appeal the district court’s order. See Unauthorized Practice of

Law Comm. v . Gordon,

1 , 13-14 (1st Cir. 1992); United

States v . Valencia-Copete,

, 6 (1st Cir. 1986).

James R. Muirhead United States Magistrate Judge

Date: August 9, 2004

cc: Daniel E . Will, Esq. Lawrence K. Kolodney, Esq. Gary A . Clark, Esq. Jennifer Rood, Esq. Jonathan Hangartner, Esq. Laura L . Carroll, Esq.

40