Patent Case Summaries January 19, 2022

Patent Case Summaries | Week Ending January 14, 2022

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board.

Evolusion Concepts, Inc. v. HOC Events, Inc., et al., Nos. 2021-1963, -1987 (Fed. Cir. (C.D. Cal.) Jan. 14, 2022). Opinion by Taranto, joined by Prost and Chen.

Evolusion owns a patent directed to a device and method for converting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. Evolusion filed separate infringement suits against HOC Events and Juggernaut Tactical.

In the Juggernaut case, both parties moved for summary judgment regarding infringement. The motions turned on whether a claimed “magazine catch bar” includes or excludes a factory-installed (OEM) magazine catch bar. The district court ruled that a factory-installed magazine catch bar (used in Juggernaut’s products) is excluded. The court relied primarily on a sentence in the specification that states: “The invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” The court therefore granted Juggernaut summary judgment of noninfringement, and Evolusion appealed.

The Federal Circuit reversed. First, the court ruled that the language of the asserted claims does not limit “the scope of the generic term ‘magazine catch bar’ to exclude one that was factory installed.” The court also addressed an unasserted method claim that requires removing the factory-installed magazine release button assembly and installing a new device. The Federal Circuit distinguished the claim, explaining that it “does not require, as a removal step, ‘discarding’ the OEM catch bar,” nor does it require “installing a ‘new’ or ‘different’ magazine catch bar.”

Second, the Federal Circuit held that the “specification nowhere limits the scope of a ‘magazine catch bar’ to exclude factory-installed ones.” Addressing the sentence in the specification relied on by the district court, the Federal Circuit ruled that the sentence “has the same character as what is found in” the unasserted method claim. As with that claim, “the specification sentence does not preclude the installation of a factory-installed magazine catch bar.”

The Federal Circuit thus construed the term “magazine catch bar” according to its ordinary meaning, which includes a factory-installed magazine catch bar. The court then reversed and remanded to the district court.

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Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC, No. IPR2021-00330 (PTAB POP Jan. 14, 2022). Opinion by Boalick, joined by Hirshfeld and Bonilla.

The Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) concluded that a petitioner’s confirmation of payment using the Federal Reserve Fedwire System “constitutes sufficient evidence to demonstrate that the required fee accompanies a petition under 35 U.S.C. § 312(a) and 37 C.F.R. § 42.103(a), and constitutes sufficient evidence to demonstrate that ‘payment is received’ under 37 C.F.R. § 42.103(b).”

Toshiba filed a petition for IPR, and the petition was given a filing date of December 21, 2020. Toshiba then filed a motion to correct the filing date, requesting a date of December 16, 2020, in order to avoid a time bar under 35 U.S.C. § 315(b). In the motion, Toshiba explained that it paid the filing fee via wire transfer on December 16, 2020, as confirmed by a Fedwire confirmation of payment. In a split decision, the Board denied the motion and denied institution. Toshiba sought rehearing and POP review.

On review, the POP first observed that the USPTO permits fees to be paid by wire transfer through Fedwire. The POP then concluded that Toshiba’s confirmation of payment via Fedwire demonstrated that Toshiba had complied with the USPTO’s published instructions for such a payment. The confirmation indicated a status of “Successful” and “Completed,” demonstrating that Toshiba had adequate funds in its account and successfully transferred the full amount of the fee. The POP thus found that “Petitioner did everything in its power to pay the fee as instructed.”

Because Toshiba timely paid the filing fee, the POP concluded that a time bar did not apply and vacated the Board’s decision denying institution. “However, intervening events [led the POP] to deny this timely filed petition.” The Federal Circuit recently affirmed a district court decision finding all challenged claims invalid under 35 U.S.C. § 101, and thus the POP denied institution of the IPR.

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