UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW HAMPSHIRE

Davies Innovations, Inc.

v. Civil No. 16-cv-352-LM Opinion No.

SIG Sauer, Inc. and Sturm, Ruger & Company, Inc.

O R D E R

Plaintiff Davies Innovations, Inc. brought separate patent

infringement lawsuits against SIG Sauer, Inc. (“SIG”) and Sturm,

Ruger & Company, Inc. (“Ruger”) in the United States District

Court for the Southern District of Texas, Galveston Division.

See Davies Innovations, Inc. v. SIG Sauer, Inc., No. 3:15-cv-

00281 (S.D. Tex. filed Oct. 9, 2015); Davies Innovations, Inc.

v. Sturm, Ruger & Company, Inc., No. 3:15-cv-00282 (S.D. Tex.

filed Oct. 9, 2015). In both actions, plaintiff alleged

infringement of the same patent, United States Patent No.

7,827,722 (the “‘722 Patent”), which discloses a rifle.

Defendants separately moved in their respective actions to

transfer their cases to this court, and both motions were

granted. Once transferred, the court consolidated the two cases

for pre-trial purposes, including claim construction

proceedings. The parties differ over the meaning of a number of terms as

they appear in several claims of the ‘722 patent. The court

received briefing and, on June 30, 2017, conducted a hearing on

this issue in accordance with Markman v. Westview Instruments,

Inc.,

(1996). The parties used the hearing

solely to present oral argument. Based on the parties’

presentations and memoranda, the court interprets the disputed

claim terms as summarized below.

STANDARD OF REVIEW

The meaning of language in a patent claim presents a

question of law for the court to decide. Markman,

. “[T]he words of a claim are generally given their ordinary

and customary meaning,” i.e., “the meaning that the term would

have to a person of ordinary skill in the art in question at the

time of the invention.” Phillips v. AWH Corp.,

,

1312–13 (Fed. Cir. 2005) (en banc) (quotation marks omitted).

In arriving at this meaning,

a claim construction analysis must begin and remain centered on the claim language itself, for that is the language the patentee has chosen to particularly point out and distinctly claim the subject matter which the patentee regards his invention. The claims, of course, do not stand alone. Rather, they are part of a fully integrated written instrument, consisting principally of a specification that concludes with the claims. For that reason, claims must be read in light of the specification, of which they are a part.

2 Source Vagabond Sys. Ltd. v. Hydrapak, Inc.,

(Fed. Cir. 2014) (citations, quotation marks, and bracketing by

the court omitted).

Yet “[w]hen consulting the specification to clarify the

meaning of claim terms, courts must take care not to import

limitations into the claims from the specification.” Abbott

Labs. v. Sandoz, Inc.,

(Fed. Cir. 2009) (en

banc). “It is therefore important not to confuse exemplars or

preferred embodiments in the specification that serve to teach

and enable the invention with limitations that define the outer

boundaries of claim scope.” Intervet Inc. v. Merial Ltd.,

(Fed. Cir. 2010) (citing Phillips,

).

“In addition to consulting the specification, . . . a court

should also consider the patent’s prosecution history, if it is

in evidence.” Phillips,

(quotation marks and

citation omitted). The court examines the prosecution history

“to discern the applicant’s express acquiescence with or

distinction of the prior art as further indication of the scope

of the claims.” Chimie v. PPG Indus., Inc.,

(Fed. Cir. 2005).

Further, though “less significant than the intrinsic

record” to claim construction, the court may also “rely on

extrinsic evidence, which consists of all evidence external to

3 the patent and prosecution history, including expert and

inventor testimony, dictionaries, and learned treatises.”

Phillips,

(quotation marks and citation

omitted). Although “extrinsic evidence may be useful to the

court, . . . it is unlikely to result in a reliable

interpretation of patent claim scope unless considered in the

context of the intrinsic evidence.”

; see also Bell

Atl. Network Servs., Inc. v. Covad Commc’ns Grp., Inc.,

, 1269 (Fed. Cir. 2001) (“extrinsic evidence may be used

only to assist in the proper understanding of the disputed

limitation; it may not be used to vary, contradict, expand, or

limit the claim language from how it is defined, even by

implication, in the specification or file history”).

BACKGROUND

The ‘722 patent issued on November 9, 2010. Robert Davies,

the inventor, was the President of Advance Device Design and RF

Power Devices, Inc. After Mr. Davies passed away in October

2012, the ‘722 patent was assigned, first to Mr. Davies’ friend,

David Stanowski, and subsequently, on October 7, 2015, to Davies

Innovations, Inc. (“Davies”), the plaintiff in this case. Two

days after the latter assignment, Davies filed the instant

lawsuits against SIG and Ruger, alleging that both defendants

infringe the ‘722 patent by making, using, offering to sell, and

4 selling rifles covered by the patent’s claims. See

(a).

The ‘722 patent generally discloses a gas-piston driven

rifle having an upper receiver, a bolt carrier, a barrel, a

handguard, and a gas-piston operating system that is at least

partially removable through a plug in the front of a barrel

coupling that serves to redirect gases from the discharge of the

weapon to a piston assembly. The gases force the piston

assembly rearward, causing a force to be exerted on the bolt

carrier, which forces the bolt carrier rearward to eject the

spent cartridge casing.

The parties differ over the meaning of four terms as they

appear in, among others, claim 1 of the ‘722 patent.1 Claim 1,

with the disputed claim terms underlined, provides:

1. A rifle having an upper receiver carrying a bolt carrier and a barrel attached to the upper receiver, the rifle further comprising:

an operating system extending forwardly along the barrel and terminating in a barrel coupling2 including

1 Each of the disputed terms in claim 1 also appears in independent claim 5 and all but “a piston moveable between a retracted position and an extended position within the cylinder” appear in independent claim 8.

2 In their claim construction briefs, the parties differed over the meaning of the term “barrel coupling” as it appears in claim 1 and other claims. At the beginning of the hearing, the parties notified the court that they had agreed to the following construction of that term: “a component for affixing at least the piston assembly of the operating system.”

5 a piston assembly coupled to the barrel for receiving propelling gasses from the barrel, the piston assembly having a cylinder with an open forward end, a piston moveable between a retracted position and an extended position within the cylinder, and an end plug removably closing the open forward end of the cylinder to permit passage of the piston therethrough when the plug is removed.

a tubular handguard having a forward end, a rearward end, a central void extending between the forward end and the rearward end, and a channel extending therealong adjacent the central void, the tubular handguard received about the barrel with the channel providing clearance for the operating system and the forward end being open to permit access to the barrel coupling and end plug of the operating system; and

a barrel nut coupling the barrel to the receiver, and the tubular handguard encircling the barrel is received about and coupled to the barrel nut.

Doc. no. 1-1 at 22, Claim 1 (emphasis added).

In addition, the parties differ over the meaning of one

term as it appears in claim 8 of the ‘722 patent. Claim 8, in

relevant part and with the disputed claim term underlined,

discloses a rifle comprising:

an operating system extending along the barrel and terminating in a barrel coupling including a piston assembly coupled to the barrel for receiving propelling gasses from the barrel, the piston assembly having a cylinder with an open forward end, a piston/pushrod assembly moveable between a retracted position and an extended position, and an end plug removably closing the open forward end of the cylinder

6 to permit passage of the piston/pushrod assembly therethrough when the plug is removed;

Id. at 22, Claim 8 (emphasis added).3

DISCUSSION

As noted, the parties differ over four terms as they appear

in claim 1 and one term as it appears in claim 8 of the ‘722

patent. The court resolves those disputes as follows.

I. Independent claim 14

A. “a piston moveable between a retracted position and an

extended position within the cylinder”

Claim 1 of the ‘722 patent recites a piston assembly having

a cylinder with “a piston moveable between a retracted position

and an extended position within the cylinder.” Davies argues

that construction of this term is unnecessary and that it should

be given its plain and ordinary meaning. SIG disagrees, arguing

that the term means “a piston that laterally moves between a

forward (retracted) position and a rearward (extended) position,

in each of which positions the piston is borne by and resides

directly inside the cylinder.” Ruger “agrees with and adopts

3 The disputed claim term in claim 8 does not appear in any other claim, though claim 9 uses the phrase “piston/pushrod assembly.”

4 The same construction applies to the terms as they appear in any claim in the ‘722 patent.

7 the positions and arguments set forth in SIG’s Opening Claim

Construction Brief.”5 Doc. no. 76 at 9.

SIG contends that its proposed construction helps to

clarify two elements of this disputed claim term—that the piston

is located within the cylinder and that the piston moves from a

forward to rearward position therein. The court addresses each

element separately.

1. Location of the Piston

SIG asserts that the intrinsic evidence shows that the

piston must be housed within the cylinder without anything in

between the piston and the cylinder. It therefore proposes a

construction of this term as requiring that the piston is “borne

by and resides directly inside the cylinder.”

In support of its position, SIG cites several pieces of

intrinsic evidence. First, it relies on other parts of the ‘722

patent. SIG refers to the following language from the

specification: “Piston 42 is carried within cylinder 40 and

includes a hollow piston head 45 with self cleaning grooves 46

formed in piston head 45, to prevent build-up of powder residue

5 Ruger’s position is not entirely clear, in that it proposes a construction of “the plain and ordinary meaning which Ruger believes to be consistent with SIG’s proposed construction.” Doc. no. 76 at 9. Other than asserting in its opening brief that it adopted SIG’s positions and arguments on this claim term, Ruger offered no argument in its briefs or at the hearing concerning this term.

8 such as carbon, engaging an inner surface of cylinder 40.” Doc.

no. 1-1 at Col. 4, ll. 55-59 (emphasis added). In addition, SIG

refers to Figures 3 and 4 in the ‘722 patent, noting that in

both “there is no interstitial vessel or other tube between the

piston 42 and the cylinder 40.” Doc. no. 77 at 11. Partial

views of Figures 3 and 4 are shown below.

Doc. no. 1-1 at 4, Fig. 3.

Id. at 5, Fig. 4.

The portions of the ‘722 patent upon which SIG relies do

not support limiting the claim in the way SIG proposes. For

9 example, SIG cites language in the specification under the

heading “DETAILED DESCRIPTION OF A PREFERRED EMBODIMENT.” Doc.

no. 1-1 at Col. 4, ll. 8-9. Similarly, Figures 3 and 4 in the

‘722 patent upon which SIG relies represent a “preferred

embodiment” of the invention. Id. at Col. 3, ll. 21-25

(providing “detailed description of a preferred embodiment” as

set out in the drawings). While this evidence may suggest that

the piston is “borne by and resides directly inside the

cylinder,” claims are not limited by preferred embodiments

absent a clear expression of intent to limit the claims’ scope

to those embodiments. Enzo Biochem, Inc. v. Applera Corp.,

(Fed. Cir. 2010); see also Info-Hold, Inc. v.

Applied Media Techs. Corp.,

(Fed. Cir. 2015)

(“We find nothing in the ‘374 patent’s preferred embodiments or

the remainder of the specification that evinces a clear

intention to restrict the invention’s communications to those

initiated by the server.”). SIG points to no clear expression

of the inventor’s intent to limit the claims’ scope to the

preferred embodiment and, therefore, the cited portions of the

‘722 patent do not support SIG’s proposed construction.

SIG disagrees that Figures 3 and 4 represent only a

preferred embodiment. It notes that the specification describes

Figure 3 as representing a drawing of a portion of the rifle “in

accordance with the present invention.” Doc. no. 1-1 at Col. 3,

10 ll. 31-32. SIG argues that such language shows that Figure 3

imposes a limitation on the invention. Although SIG is correct

that use of the phrase “present invention” can limit the scope

of the entire invention in certain circumstances, see Verizon

Servs. Corp. v. Vonage Holdings Corp.,

, 1308 (Fed.

Cir. 2007), the use of that phrase is not always so limiting,

see, e.g., Voda v. Cordis Corp.,

, 1320–21 (Fed.

Cir. 2008) (noting that although parts of the specification

referred to a certain embodiment as the “present invention,” the

specification did not uniformly refer to the invention as being

so limited, and the prosecution history did not reveal such a

limitation). That this language is not so limiting here is

supported by other language in the specification which provides

that “[v]arious changes and modifications to the embodiments

herein chosen for purposes of illustration will readily occur to

those skilled in the art.” Doc. no. 1-1 at Col. 10, ll. 61-63;

see True Fitness Tech., Inc. v. Precor Inc.,

(E.D. Mo. 2001) (noting that similar “boilerplate”

language weighs against construing a feature of a patent’s

drawings as a limitation). Therefore, the specification and

Figures 3 and 4 do not mandate adoption of SIG’s construction.

Second, SIG relies on a May 30, 2010 presentation Mr.

Davies made to the Special Operations Peculiar MODification

Conference entitled “Chronology Advanced Device Design, Inc.

11 Rifle Development” (the “presentation”), and which he showed to

the patent office (“PTO”) in an effort to overcome prior art

during prosecution of the ‘722 patent.6 In his submission to the

PTO, the inventor referred to the photographs in the

presentation as those “of my invention as described and claimed

in the above identified application” for the ‘722 patent. Doc.

no. 77-10 at 2. SIG asserts that the photographs in the

presentation, depicted below, show the operating system with a

piston within the cylinder without anything between the piston

and the cylinder.

Doc. no. 77-4 at 13.

6 Throughout this order, the court often refers to the prosecution history and Mr. Davies’ representations to the PTO. To avoid confusion with Davies, the corporate plaintiff in this case, the court will refer to Mr. Davies as “the inventor.”

12 Id. at 14.

Although pictures of the inventor’s commercial embodiment

in the presentation may be compatible with SIG’s construction,

“‘infringement is determined on the basis of the claims, not on

the basis of a comparison with the patentee’s commercial

embodiment of the claimed invention.’” Int’l Visual Corp. v.

Crown Metal Mfg. Co., Inc.,

(Fed. Cir. 1993)

(quoting ACS Hosp. Sys., Inc. v. Montefiore Hosp.,

(Fed. Cir. 1984) (alterations omitted)). Therefore,

the court will not impose a limitation based on the pictures of

the inventor’s commercial embodiment of the ‘722 patent.

The language of the claim requires that the piston be

moveable “within the cylinder.” Therefore, as Davies observes,

that phrase would be sufficiently clear to a person of ordinary

skill in the art as to need no additional clarification.

2. Movement of the piston

SIG argues that the words “retracted position” and

“extended position” require clarification because “the intuitive

13 perception would be that something being ‘retracted’ would

become closer to the shooter, and ‘extended’ would characterize

being something farther away from the shooter.” Doc. no. 77 at

10. SIG notes that in the ‘722 patent, “the intuitive proximity

of ‘retracted’ vs. ‘extended’ position is reversed” and,

therefore, argues that the claim language should be interpreted

to clarify the location of those positions.

In addition,

SIG seeks to add the word “laterally” to describe the movement

of the piston.

As the parties concede, they do not disagree over the

piston’s movement as it is set forth in this claim term. They

agree that the piston is moveable from one end of the cylinder

to the other, and the piston moves side-to-side within the

cylinder. SIG argues that its proposed construction is useful

to a lay jury, while Davies contends that the existing language

is sufficiently clear that it needs no clarification.

The court agrees that clarification of the piston’s

movement in this claim term may be useful to the jury.7 SIG’s

proposed construction, however, imposes additional limitations

on the claim term, none of which is supported by the intrinsic

7At the hearing, Davies represented that “retracted” and “extended,” in this context, are not terms of art, but rather simply language used by the inventor to describe the relative positions of the piston. The court thus need not import any definition of the terms, and clarifies them only in light of the intrinsic evidence.

14 evidence. For example, although the parties agree that the

piston moves horizontally within the cylinder (rather than

vertically), that term “lateral” is absent from the ‘722 patent,

and there is nothing in the intrinsic evidence to show that the

piston must move in that fashion. In addition, the limitation

is that the piston must be moveable—that is, able to move—

between two positions within the cylinder, not that it must move

between those positions, as SIG proposes.

As the parties agree, the words “retracted” and “extended”

as used in this claim term are used to denote opposite ends of

the cylinder. Therefore, the court construes the phrase “a

piston moveable between a retracted position and an extended

position” to mean “a piston moveable between two positions at

opposite ends.”

3. Summary

The court construes the term “a piston moveable between a

retracted position and an extended position within the cylinder”

to mean “a piston moveable between two positions at opposite

ends within the cylinder.”

B. “an end plug removably closing the open forward end of

the cylinder”

Claim 1 of the ‘722 patent recites a piston assembly having

“an end plug removably closing the open forward end of the

15 cylinder.” As with the previous claim term, Davies and Ruger

argue that this term should be given its plain and ordinary

meaning. SIG disagrees, arguing that this term means “a cap,

separate from the cylinder in which the piston resides, that can

be removed from (and when in place, closes) the open forward end

of the cylinder.” The court, again, concludes that SIG’s

proposed construction imports unnecessary and unsupported

limitations into the claim, and so declines to adopt it.

SIG asserts that its proposed construction helps to clarify

two elements of the term—that the “end plug is not an integral

part of the cylinder (in which cylinder the piston is found)”

and that the end plug operates as a removable cap, separate from

the cylinder.

Once again, the parties do not necessarily disagree as to

the scope of this claim term. In an effort to clarify the term,

however, SIG unnecessarily adds words or phrases that change the

meaning of the term or are redundant. For example, SIG proposes

to change the term “end plug” to “cap,” a change it describes as

“innocent” and providing “clarity.” Doc. no. 84 at 10. But SIG

offers no support for use of the word “cap.” That word does not

appear anywhere in the specification and SIG essentially agrees

that it uses the word so as not to use the same language as used

in the ‘722 patent. Even if the court felt it necessary to use

a different word than the inventor himself used, which it does

16 not, the word “cap” is not synonymous with the term “end plug”

as it is used in the ‘722 patent. The word “cap” denotes

covering something, see, e.g., Merriam–Webster Online

Dictionary, http://www.merriam-webster.com/dictionary/cap (last

visited August 29, 2017) (defining “cap” as “an overlaying or

covering structure”), while the patent clearly describes the end

plug as something that inserts into, rather than merely covers,

the cylinder.

In addition, SIG seeks to insert the phrase “in which the

piston resides” to describe the cylinder. That addition,

however, is unnecessary, as the language immediately preceding

this claim term identifies, first, the cylinder to which the

term refers, and second, that the piston is within it, as

discussed supra. See doc. no. 1-1 at Col. 11, ll. 11-14 (“a

piston moveable between a retracted position and an extended

position within the cylinder, and an end plug removably closing

the open forward end of the cylinder”).

Finally, SIG contends that the proper construction must

include language showing that the end plug is separate from the

cylinder. It asserts that for the end plug to be removable, “it

must of necessity be a separate component.” Doc. no. 84 at 11.

SIG adds that an “object cannot remove itself from itself, or

otherwise treat itself as a separate object capable of relative

manipulation in space.” Id. In making that argument, however,

17 SIG implicitly concedes that the language in the claim term is

self-explanatory, and thus needs no clarification.

SIG’s proposed construction of this term “would contribute

nothing but meaningless verbiage to the definition of the

claimed invention.” Harris Corp. v. IXYS Corp.,

(Fed. Cir. 1997). Therefore, the court declines to adopt

SIG’s proposal.

The claim term, however, could benefit from clarification,

as the phrase “removably closing” is, at the very least,

awkward. Therefore, the court construes “an end plug removably

closing the open forward end of the cylinder” to mean: “an end

plug that closes the open forward end of the cylinder and that

can be removed.”8

C. “tubular handguard encircling the barrel”

The parties differ over the proper construction of the term

“tubular handguard encircling the barrel.” Davies urges that

8 The court proposed this construction at the hearing. Although the parties maintained that they endorsed their proposed constructions (or, in the case of Davies and Ruger, their argument that the limitation did not require a construction), none of the parties voiced an immediate objection to the court’s proposal. SIG, however, requested that the court add the phrase “from the cylinder” at the end, so that the full construction would read “an end plug that closes the open forward end of the cylinder and that can be removed from the cylinder.” The court sees no reason to include this proposed additional language for the reasons discussed supra, and declines to do so.

18 the term should be given its plain and ordinary meaning and that

no construction is required. Ruger proposes “a substantially

circular handguard composed of one or more pieces.” SIG

proposes “a one-piece, generally cylindrical handguard that

continuously surrounds the barrel.” The parties’ competing

proposals demonstrate that two elements of the limitation

require clarification: 1) whether the handguard must be a single

piece or can be more than one piece (SIG argues that the

handguard must be one piece, while Ruger and Davies contend that

the handguard can be more than one piece), and 2) the shape of

the handguard (SIG and Ruger argue that the handguard must be

circular or cylindrical, while Davies contends that the

handguard must only be tubular).

1. Number of Pieces

SIG argues that the limitation requires that the handguard

be only one piece, and it asserts that the intrinsic evidence

supports such a requirement. Specifically, SIG refers to

Figures 9 and 9a in the ‘722 patent, as well as language in the

specification and the prosecution history.

19 a. Figures 9 and 9a

First, SIG points to Figures 9 and 9a of the ‘722 patent:

Doc. no. 1-1 at 7, Fig. 9.

Id. at 8, Fig. 9a. According to SIG, both figures show a one-

piece, rather than a two-piece, handguard, and thus limit the

invention accordingly.

Assuming these drawings definitively show a unitary

handguard, that fact would not be sufficient to support SIG’s

proposed limitation. As discussed above, SIG points to no clear

20 intent by the inventor to limit the scope of the patent’s claims

to the embodiment set forth in the figures.9 See Anchor Wall

Sys., Inc. v. Rockwood Retaining Walls, Inc.,

,

1306–07 (Fed. Cir. 2003) (“the mere fact that the patent

drawings depict a particular embodiment of the patent does not

operate to limit the claims to that specific configuration”).

Even if the figures could limit the claim, it is far from

clear that either drawing shows a unitary handguard. Both

figures represent only a “partial perspective view” of the

handguard. Doc. no. 1-1 at Col. 3, ll. 45, 47. SIG offers no

support for the assertion that a person of ordinary skill in the

art, viewing these incomplete renditions, would view them as

depicting a one-piece handguard.

9 To support its contention that Figures 9 and 9a operate to limit the scope of the invention, SIG cites the inventor’s “Response to Notice of Non-Compliant Appeal Brief” which he submitted to the PTO during prosecution of the ‘722 patent. In that document, the inventor explained:

The element claimed wherein the forward end of the handguard is open to permit access to the barrel coupling of the operating system is clearly stated in the explanation of the subject matter of the independent claims as being shown in FIG. 9. However, there is no specific language in the specification to which attention can be directed, as it is simply shown in FIG. 9.

Doc. no. 77-14 at 22. SIG fails to show that this language evinces a clear intent to limit the scope of the invention to the drawings in Figure 9 and 9a.

21 Therefore, the drawings in Figures 9 and 9a do not support

SIG’s proposed construction.

b. Specification

SIG next points to the following language in the ‘722

patent’s specification:

Barrel nut 68 also carries a hand guard 69 having a central void 71 and a channel 74 extending therealong and adjacent thereto (see FIG. 9 and FIG. 9a.) and is described in detail in co-pending U.S. patent application entitled “RIFLE HAND-GUARD SYSTEM WITH INEGRATED BARREL NUT” filed

, Ser. No. 10/105,700, herein incorporated by reference.

Doc. no. 1-

, ll. 1-7. In other words, in describing the

handguard disclosed in the ‘722 patent, the inventor

incorporated Mr. Davies’ 10/105,700 patent application (the

“‘700 application”) into the specification.10

In an August 6, 2003 Response, Amendment and Request for

Reconsideration, the inventor amended the ‘700 application to

refer to a “unitary tubular handguard” to overcome an

anticipation rejection. In explaining the amendment, the

inventor stated:

Claims 1-3, 8-11 and 16 have been rejected as being anticipated by Olson. Withdrawal of the rejection is requested because independent claims 1 and 9 have been amended to more specifically set out the tubular handguard as being a “unitary tubular handguard.” The

10The ‘700 application eventually became United States Patent No. 6,694,660 (the “‘660 patent”). The ‘660 patent issued on February 24, 2004, prior to the June 16, 2006 filing of the application that gave rise to the ‘722 patent.

22 hand guard of Olson is taught as and must be constructed of two halves. A unitary tubular handguard, as claimed in amended claims 1 and 9, cannot be employed in Olson. The specific elements of the handguard system require as [sic] two piece construction. Since each and every element of the invention as claimed in amended claims 1 and 9 are not taught by Olson, there can be no anticipation.

Doc. no. 77-24 at 12. SIG argues that, by distinguishing the

Olson reference on these grounds when prosecuting the ‘700

application, the inventor specifically disclaimed a handguard

composed of more than one piece in the ‘722 patent.

SIG’s arguments as to the ‘700 application do not support a

claim limitation of a unitary handguard in the ‘722 patent. SIG

ignores the sentence immediately following the language in the

‘722 patent’s specification that incorporates the ‘700

application. That sentence reads: “It will be understood that

other barrel nuts and hand guards can be employed if desired.”

Doc. no. 1-1 at Col. 6, ll. 7-8. Thus, the specification

explicitly left room for more than the handguard described in

the ‘700 application, and specifically did not limit the

handguard disclosed in the ‘722 patent to the one claimed in the

‘700 application.

In addition, as both Davies and Ruger note, the ‘700

application demonstrates that Mr. Davies understood how to claim

a unitary handguard if he so desired. See doc. no. 77-24 at 4

(claiming a “unitary tubular handguard . . .”). The fact that

23 he did not include such a limitation in the ‘722 patent further

evinces his intent to not limit the handguard disclosed in the

‘722 patent to a unitary piece.11 For those reasons, the ‘700

application’s reference to a unitary tubular handguard does not

support reading that limitation into the ‘722 patent.

c. Prosecution history

Finally, SIG relies on the ‘722 patent’s prosecution

history. Specifically, SIG notes that on January 4, 2007, the

Patent Examiner rejected certain claims in the ‘722 patent as

obvious, see

, in light of two other patents:

(“Booth”), which disclosed a handguard

system, and

(“Langendorfer”), which

disclosed a rifle.

Specifically, the examiner rejected certain claims in the

‘722 patent, noting that at “the time of the invention, one

having ordinary skill in the art would have found it obvious to

provide the rifle of Langendorfer,” which did not disclose the

details of a handguard, “with the features of Booth,” which did.

Doc. no. 77-18 at 6. SIG invokes the inventor’s attempts to

distinguish Booth and Langendorfer as limiting the invention

11Further, as Ruger noted at the hearing, if SIG’s reading were correct, then the court would necessarily have to read in every limitation from the ‘700 application into the handguard disclosed in the ‘722 patent.

24 disclosed in the ‘722 patent as having a unitary handguard. The

court discusses each patent in turn.

i. Booth patent

SIG cites the inventor’s “Amendment and Response to First

Office Action” dated May 8, 2007. In that response, the

inventor noted:

Booth teaches a hand guard with a central void, but offers no teaching or suggestion of a channel adjacent thereto. Furthermore, there is no suggestion or teaching that any portion of the operating system at the forward end of the handguard is accessible. Therefore, since each and every element of the invention as claime[d] in amended claims 30 and 41 are not taught by Booth, there can be no anticipation.

Doc. no. 77-17 at 17-18. SIG argues that because the inventor

distinguished Booth on certain bases but did not argue that the

handguard disclosed in the ‘722 patent was or could be a two-

piece solution, in contrast to Booth’s single-piece handguard,

the inventor necessarily conceded that the ‘722 patent disclosed

a unitary handguard.

SIG offers no support for the proposition that a patentee’s

failure to distinguish his invention from prior art on a

particular element is a concession that such element exists in

the inventor’s invention. SIG argues simply that “human nature”

dictates that the inventor would have attempted to overcome the

rejection on every basis he could. The law, however, does not

impose such a duty on a patentee. See, e.g., DeMarini Sports,

25 Inc. v. Worth, Inc.,

, 1326–27 (Fed. Cir. 2001)

(refusing to rely on ambiguity surrounding patentee’s lack of

argument during prosecution to construe claim term).

Even if the law did impose such a duty, however, it is far

from clear that Booth discloses a unitary handguard. In listing

Booth’s features, the examiner noted only that Booth discloses a

“tubular handguard.” Doc. no. 77-18 at 5. SIG, once more,

relies only on a drawing in the Booth patent, which it asserts

is “clearly depicting a one-piece handguard.”

Doc. no. 77 at 19. Similar to SIG’s attempt to use Figures 9

and 9a in the ‘722 patent to limit the scope of the patent’s

terms, its attempt to use drawings in the Booth patent to

support its argument falls flat. As with Figures 9 and 9a, it

26 is far from clear that the drawings in the Booth patent show a

unitary handguard, or in any way impose such a limitation on the

Booth claims.

Thus, SIG attempts to draw conclusions from the inventor’s

failure to distinguish Booth on grounds not raised by the

examiner and not claimed in the Booth patent. For obvious

reasons, the court declines to follow SIG’s lead.

ii. Langendorfer patent

SIG similarly relies on the inventor’s March 12, 2008 brief

appealing the final rejection of the ‘722 patent. Responding

again to the § 103 obviousness rejection, the inventor stated:

Langendorfer does not teach the details of the handguard, and therefore does not and cannot teach or suggest a channel extending therealong providing clearance for the operating system. Specifically, Langendorfer teaches handguards 31. In a conventional rifle of this type, the handguard is formed of two halves. While not specifically described, this must be the case by the use of the plural.

Doc. no. 77-15 at 20-21. SIG argues that this language

“definitively put to rest” that the tubular handguard claimed in

the ‘722 patent must be unitary. Doc. no. 77 at 20.

“The Federal Circuit has cautioned against excessive

reliance on prosecution history for claim construction purposes

because the prosecution history ‘often lacks the clarity of the

specification and this is less useful for claim construction

purposes.’” Biedermann Motech GMBH v. Alphatec Spine, Inc., 482

, 34–35 (D. Mass. 2007) (quoting Phillips,

). Thus, a prosecution history disclaimer of claim

scope “must be both clear and unmistakable.” Sorensen v. Int’l

Trade Comm’n,

(Fed. Cir. 2005) (citation

omitted). “This may occur, for example, when the patentee

explicitly characterizes an aspect of his invention in a

specific manner to overcome prior art.” Purdue Pharma L.P. v.

Endo Pharm. Inc.,

, 1136 (Fed. Cir. 2006).

Here, it is far from clear that the cited language shows

that the inventor was disclaiming a handguard that consisted of

more than one piece. Although the inventor referenced

Langendorfer having a handguard “formed of two halves,” he does

not clearly express that an element of his invention is a

unitary handguard or explain the significance of Langendorfer’s

two-piece handguard vis-à-vis his invention. Such statements in

the prosecution history are “far too slender a reed to support

the judicial narrowing of a clear claim term.” N. Telecom Ltd.

v. Samsung Elecs. Co., Ltd.,

(Fed. Cir.

2000); see also Rexnord Corp. v. Laitram Corp.,

(Fed. Cir. 2001) (refusing to limit the ordinary meaning of

the claim because the alleged disclaimer in the file wrapper was

at best “inconclusive”).

Therefore, the language in the prosecution history

regarding the Langendorfer rifle cited by SIG does not

28 unmistakably show that the ‘722 patent claims a unitary

handguard.

d. Summary

For the reasons set forth above, the intrinsic evidence

does not support a claim limitation requiring the handguard to

be a single piece.

2. Shape of the handguard

Davies asserts that, because the claims recite a “tubular”

handguard, the court need not clarify the shape of the

handguard. Ruger contends that the handguard must be

“substantially circular,” while SIG argues that it must be

“generally cylindrical.” Ruger and SIG represent that their

proposed constructions regarding the shape of the handguard are

generally consistent with each other. Because SIG agreed that

its proposed construction of “generally cylindrical” was

essentially the same as Ruger’s proposed construction of

“substantially circular,” it joined Ruger’s arguments.12

a. Substantially circular

Ruger argues that the word “tubular” imposes a limitation

that the handguard must be circular. The intrinsic evidence

12Ruger and SIG concede that neither the claim language nor the specification uses the term “circular” or “cylindrical” when describing the handguard.

29 Ruger cites in support of that argument, however, does not

compel such a reading.

To support its proposed construction, Ruger notes that

Figures 9 and 9a, which provide partial views of the handguard

and are replicated above, see supra Part I.C.1.a, show that the

handguard in the ‘722 patent has “a substantially circular

cross-section.” Doc. no. 76 at 10. Ruger also refers to other

figures in the ‘722 patent showing elements of the claimed rifle

that are described in the specification as “tubular.” Ruger

notes that each figure containing a “tubular” component shows

that component as having a circular shape. Although Ruger’s

descriptions of the figures may be correct, as discussed above,

nothing in the ‘722 patent evinces the inventor’s intention to

limit the claims’ scope to the embodiments represented in the

figures. Therefore, the figures in the ‘722 patent alone do not

support imposing a limitation that the handguard must be

substantially circular.

Ruger also quotes language from the ‘700 application,

which, as discussed above, is incorporated by reference into the

‘722 patent’s specification. The relevant language describes

the handguard as having a “diameter,” which, Ruger asserts, is

“associated with circles.” Id. at 9. Ruger’s reliance on the

use of the word “diameter” in the ‘700 application, however,

does not support such a limitation in the ‘722 patent. Even if

30 that word did support a limitation that the handguard disclosed

in the ‘700 application must be circular, for the reasons

discussed supra Part 1.C.1.b., the handguard in the ‘722 patent

is not limited by that application.13

Setting the word “tubular” aside, Ruger also asserts that

the word “encircling” requires the handguard to be substantially

circular. Ruger finds no support for that assertion in the

intrinsic evidence. The only time the word “encircling” is used

in the ‘722 patent is to describe the tubular handguard, and

nothing in the specification limits the handguard to a circular

shape. Ruger instead hangs its argument on the Merriam-Webster

dictionary definition of encircle, which defines the word as “to

form a circle around.” Doc. no. 76-7 at 4. The intrinsic

evidence, however, is clear that the handguard need only be

tubular and, therefore, the court need not resort to extrinsic

evidence such as a dictionary definition.14

13Indeed, Ruger persuasively made that very argument with regard to the unitary versus two-piece limitation.

14Even if the court did consider the dictionary definition Ruger puts forth, it would not change the conclusion. The same dictionary cited by Ruger also defines “encircle” as “to pass completely around,” see doc. no. 76-7 at 4, which appears to the court to be a more relevant definition of the term as used in the claims of the ‘722 patent.

31 For those reasons, the court declines to adopt Ruger’s

proposed construction that the tubular handguard must be

“substantially circular.”

b. Generally cylindrical

In addition to echoing Ruger’s arguments, SIG cites the May

30, 2010 presentation that the inventor included with his

declaration to the PTO during prosecution of the ‘722 patent.

See supra Part I.A.1. SIG notes that both pictures in the

presentation show a handguard in a “substantially cylindrical

fashion”:

Doc. no. 77 at 21.

32 SIG’s attempt to limit the shape of the ‘722 patent’s

handguard to that included with the inventor’s presentation to

the PTO is without merit. As discussed above, the pictures in

that presentation represent a commercial embodiment of the

inventor’s invention, and the court will not impose a limitation

based solely on pictures of that embodiment absent any evidence

that the inventor intended to so limit his claims.15

Further, as Davies notes, the specification uses the term

“cylindrical” to describe other elements of the invention. For

example, the specification refers to a “cylindrical base

member,” doc. no. 1-1 at Col. 4, ll. 32, and a “cylindrical”

weight, id. at Col. 6, ll. 52. Thus, as Davies notes, the

inventor understood how to use the word “cylindrical” and did

not do so to describe the handguard in the ‘722 patent. This

fact further supports a conclusion that the shape of the

handguard is not required to be cylindrical.

3. Summary

The intrinsic evidence shows that the handguard must be

tubular and encircle the barrel, and is not required to be a

unitary handguard. The words “tubular” and “encircling” are

15SIG also proposes that the court construe the claim term to require that the handguard “continuously surrounds” the barrel. SIG offered little argument in its briefing or at the hearing to support that limitation, and the court declines to adopt it.

33 sufficiently clear to a person of ordinary skill in the art to

not require clarification. Therefore, the court construes the

term “tubular handguard encircling the barrel” to mean “tubular

handguard composed of one or more pieces encircling the barrel.”

D. “channel providing clearance for the operating system”

The claims of the‘722 patent further recite a handguard

with a “channel providing clearance for the operating system.”

As with each preceding disputed claim term, Davies contends that

this term should be given its plain and ordinary meaning and

needs no construction. Ruger and SIG propose the following

construction: “a space within the handguard extending to the

forward part of the handguard and giving space to accommodate

the operating system.”

As the parties agree in their briefing, there is no dispute

that the handguard must contain a channel that provides room for

and accommodates at least a portion of the operating system. As

the inventor stated in his October 7, 2009 Amendment and

Response to the PTO, the handguard’s “channel is defined by its

function, namely, providing clearance for the operating system.

Since clearance is required, it is inherent that at least

portions of the operating system are within the channel.” Doc.

no. 77-13 at 15. Although Ruger and SIG seek to clarify that

requirement in their proposed construction, the function of the

34 channel is not in dispute. The court agrees with Davies that

the phrase “providing clearance for the operating system”

conveys that function in a manner that needs no clarification.

The parties differ, however, as to whether the claim

limitation requires that the channel must extend to the forward

part of the handguard. Ruger and SIG assert that the

prosecution history requires such a limitation. Specifically,

Ruger and SIG point to the March 12, 2008 appeal brief filed

with the PTO, in which the inventor attempted to overcome the

examiner’s rejection of several claims, including claim 1, under

(e) as being anticipated by Booth.16 See supra

Part I.C.1.c.ii. The inventor first explained the elements of

that claim:

Claim 30 includes the element “the handguard being tubular and having a forward end, a rearward end, a central void extending between the forward end and the rearward end, and a channel extending therealong adjacent the central void.” Additionally, the forward end of the channel is open to permit access to the barrel coupling.

Doc. no. 77-15 at 14. To overcome the prior art rejection, the

inventor argued:

Booth teaches a hand guard with a central void, but offers no teaching or suggestion of a channel adjacent thereto. Furthermore, Booth would not contemplate the use of a channel as it would be an unnecessary expense and complication not needed for the operation of the firearm of Booth. The rejection states that Booth

16 Claim 30 of the application became claim 1 of the issued patent.

35 teaches a channel 80. However, it must be pointed out that channel 80 of Booth does not extend along the central void adjacent thereto . . . .

Id. Relevant to Ruger and SIG’s argument, the inventor further

distinguished Booth on the following grounds:

Additionally, there is no suggestion or teaching that any portion of the operating system at the forward end of the handguard of Booth is accessible. The channel 80 of Booth does not extend to the forward portion of the handguard, and does not accommodate the operating system. Therefore, there can be no open end of the channel at the forward portion, to permit access to the operating system. This is not taught nor is it an inherent characteristic of the device taught. Therefore, since each and every element of the invention as claimed in claim 30 is not taught by Booth, there can be no anticipation.

Id. at 15 (emphasis added).

Ruger and SIG argue that through this language, the

inventor distinguished Booth based on the fact that its channel

does not extend to the forward portion of the handguard, which

the inventor notes is an element of his invention. Thus, Ruger

and SIG assert that the inventor understood and claimed in the

‘722 patent a channel that extends to the forward portion of the

handguard.

Davies disputes that the language in the inventor’s

appellate brief imposes a length requirement for the channel.

Though Davies acknowledges that the inventor stated that the

channel in Booth does not extend to the forward portion of the

handguard, it argues that this language related to whether the

36 channel was open to permit access to the barrel coupling.

Because the inventor distinguished Booth primarily on the

grounds that Booth did not teach a channel at all, Davies argues

that the inventor’s statement regarding the extension of the

channel was merely a way to explain that the channel was not

open and therefore did not accommodate the barrel coupling.

The court does not find Davies’ argument persuasive. In

his appellate brief, the inventor expressly distinguished the

channel on Booth’s handguard because it did not extend to the

forward portion of the handguard. The inventor subsequently

noted that this was an element of his invention, when he stated

that “[t]herefore, since each and every element of the invention

as claimed in claim 30 is not taught by Booth, there can be no

anticipation.” Doc. no. 77-15 at 15. Thus, the inventor

clearly and unmistakably represented that the channel disclosed

in his invention must extend to the forward portion of the

handguard.

Therefore, the court construes the term “channel providing

clearance for the operating system” to mean a “channel extending

to the forward portion of the handguard and providing clearance

for the operating system.”

37 II. Independent claim 8

The final disputed claim term appears in claim 8. Claim 8,

with the disputed claim term underlined, provides in relevant

part:

8. A rifle comprising:

* * *

an operating system extending along the barrel and terminating in a barrel coupling including a piston assembly coupled to the barrel for receiving propelling gasses from the barrel, the piston assembly having a cylinder with an open forward end, a piston/pushrod assembly moveable between a retracted position and an extended position, and an end plug removably closing the open forward end of the cylinder to permit passage of the piston/pushrod assembly therethrough when the plug is removed . . . .

Doc. no. 1-1, Col. 12, ll. 16, 22-31.

Davies contends that the claim term “passage of the

piston/pushrod assembly” should be given its plain and ordinary

meaning and needs no construction, and that the plain and

ordinary meaning is “passage of the piston or pushrod.” Ruger

and SIG assert that the term’s proper construction is: “removal

of the piston and push rod assembly resulting from movement

through the forward (front) end of the cylinder.”17

The ‘722 patent interchangeably refers to a “push rod” 17

and “pushrod” to describe the same component, number 54.

38 The parties focus their arguments not on the “passage”

element, but on what constitutes a “piston/pushrod assembly.”

Davies argues that the forward slash between the words “piston”

and “pushrod” is a disjunctive indicator. That is, Davies

contends that the plain and ordinary meaning of the claim term

is that the cylinder must permit passage of the piston or the

pushrod.

Davies’ reading of the disputed claim term is not supported

by the intrinsic evidence. As the parties note, the phrase

“piston/pushrod assembly” does not appear in the ‘722 patent’s

specification. The ‘722 patent does, however, use the word

“assembly” several times in reference to rifle components. In

each instance, it identifies the combination of multiple parts.

See, e.g., 1-1, Col. 4, 11. 50-51 (“Piston assembly 34 includes

a cylinder 40, a piston 42 and an end plug 43.”); id. at Col. 5,

ll. 22-25) (describing a “bolt carrier assembly 15,” which

includes a “drive key 60” and a “bolt carrier 22”); id. at Col.

12, ll. 17-18 (“an upper receiver/handguard assembly including

an upper receiver and a handguard”). Thus, the use of the word

“assembly” elsewhere in the ‘722 patent supports the reading,

argued by SIG and Ruger, that the phrase “piston/pushrod

assembly” means both the piston and the pushrod.18

18Though not raised by the parties, the court notes that the specification contains one reference to a “pushrod

39 Nor does the use of the forward slash elsewhere in the ‘722

patent support Davies’ position. To the contrary, the plain

language used earlier in claim 8 provides such evidence that the

use of a forward slash in the ‘722 patent means “and.” As noted

above, earlier in claim 8, the inventor disclosed “an upper

receiver/handguard assembly including an upper receiver and a

handguard.” Doc. no. 1-1 at Col. 12, ll. 17-18. Thus, the

inventor’s use of a forward slash when discussing a different

assembly in the same claim meant both components, rather than

either component.19

assembly”: “Thus, a new and improved automatic/semi-automatic rifle is disclosed which is more reliable because it uses a positive acting pushrod assembly, rather than a gas ejection system.” Doc. no. 1-1, Col. 10, ll. 48-50. Unlike the examples above, the specific components of this assembly are not spelled out, as it appears to refer to the system by which the rifle fires a bullet.

19Davies cites cases to support its contention that a forward slash used in a claim term means “or.” The cases Davies cites, however, draw that conclusion from the intrinsic evidence of the specific patent they are construing. See Negotiated Data Sols., LLC v. Dell, Inc.,

(E.D. Tex. 2009) (relying on language in the specification that “clearly suggests that the use of the slash in ‘framer/deframer’ is meant to mean ‘or’”); Vertical Doors, Inc. v. JT Bonn, No. SACV 05-905 JVS(ANX),

, at *3 (C.D. Cal. Oct. 30, 2006) (“applying an interpretation that the slash mark means equivalence leads to the absurd result that the patentee meant ‘opening’ and ‘closing’ to be equivalent”). Unlike the party offering its proposed construction in those cases, Davies offers no intrinsic evidence to support its interpretation.

40 For those reasons, the court construes the term “passage of

the piston/pushrod assembly” as “passage of the piston and

pushrod assembly.”20

CONCLUSION

For the reasons set forth above, the court adopts the

following constructions of the disputed claim terms.

CLAIM TERM CONSTRUCTION a piston moveable between a a piston moveable between two retracted position and an positions at opposite ends extended position within the within the cylinder cylinder an end plug removably closing an end plug that closes the the open forward end of the open forward end of the cylinder cylinder and that can be removed tubular handguard encircling tubular handguard composed of the barrel one or more pieces encircling the barrel channel providing clearance channel extending to the for the operating system forward portion of the handguard and providing clearance for the operating system passage of the piston/pushrod passage of the piston and assembly pushrod assembly

SO ORDERED.

__________________________ Landya McCafferty United States District Judge August 29, 2017

20As mentioned, Ruger and SIG propose: “removal of the piston and push rod assembly resulting from movement through the forward (front) end of the cylinder.” In light of the rest of the language of claim 8, the court does not view the remainder of the claim term as requiring further clarification.

41 cc: Laura L. Carroll, Esq. Zachary Rush Gates, Esq. Chloe F.P. Golden, Esq. James F. Laboe, Esq. Tod M. Melgar, Esq. Robert H. Miller, Esq. Glenn Schuyler Orman, Esq. Michael J. Pisko, Esq. Jeffrey C. Spear, Esq. Scott D. Stimpson, Esq. Jonathan T. Suder, Esq. Brian David Thomas, Esq.

42