by Dennis Crouch
This case has a low likelihood of being granted certiorari, nevertheless it nonetheless has some fascinating components relating to declare development and process. It is a excellent case for the Supreme Courtroom to situation a GVR (Grant-Vacate-Remand) with an order to the Federal Circuit to elucidate its reasoning.
The setup is widespread. Tactical sued Sig Sauer for patent infringement; Sig Sauer responded with an IPR petition that was finally profitable. Tactical appealed based mostly upon the PTAB’s sua sponte declare development that discovered the preamble to be limiting, however the Federal Circuit Affirmed with out opinion.
The Supreme Courtroom petition asks three questions:
- Whether or not the declare development discovering the preamble limiting was improper.
- Whether or not the PTAB violated due course of by construing the time period sua sponte and failing to provide the patentee with discover or a chance to current proof.
- Whether or not the Federal Circuit’s use of Rule 36 violates constitutional ensures of due course of and the statutory protections of 35 U.S.C. 144.
The Tactical patents cowl a forearm stabilizing brace that may be hooked up to a pistol. U.S. Patent Numbers 8,869,444 and 9,354,021. Sig Sauer initially was a distributor of Tactical’s product, however later started making its personal competing product. At that time Tactical sued.
Within the IPR petition, Sig Sauer didn’t request any declare development. Likewise, the petition resolution granting the IPR said that no declare phrases wanted any categorical development. “We agree—we’d like not expressly construe any declare time period
to resolve the events’ dispute.” Throughout briefing, neither occasion requested development of any side of the declare preambles. Finally although, in its ultimate written resolution, the PTAB interpreted the preambles as limiting after which used that development to conclude that the claims had been invalid as apparent.
Sure, I stated that the slender development led to the claims being discovered invalid. That’s uncommon — normally the addition of limitations helps to keep away from the prior artwork. On this case although the main focus was on goal indicia of non-obviousness. NST’s gross sales; copying by Sig; reward; and so on. However, by giving weight to the preamble phrases, the PTAB was capable of destroy the presumed nexus between the claims and NST’s product. The outcome, these secondary indicia had been discovered wanting as a result of NST had not supplied extra proof “commensurate with the claims” as newly construed.
For context, the claims are directed to the attachment, however the preamble recites “a handgun” and “a help construction extending rearwardly from the rear of the handgun:”
1. A forearm-gripping stabilizing attachment for a handgun, the handgun having a help construction extending rearwardly from the rear finish of the handgun, the forearm-gripping stabilizing attachment, comprising: . . .
The PTAB dominated that the claims require the handgun and in addition the help construction as recited within the preamble together with the forearm attachment described within the physique. The issue for the patentee is that its goal indicia proof centered on the forearm attachment, not the entire package deal. Thus, no nexus and no weight given to these secondary elements. In its resolution, the PTAB when by means of the entire life and which means evaluation: “we conclude that the preambles of claims 1, 3, and 5 are ‘obligatory to provide life, which means, and vitality to the declare[s],’ and, as such, are limiting.”
The case was already shut as a result of there’s a lengthy historical past of this kind of stabilizer going again to the nineteenth Century, and so the absence of secondary issues led to the obviousness conclusion.
Throughout the IPR trial, Sig Sauer had argued that the excessive gross sales had been resulting from an odd regulatory scheme towards semi-automatic rifles, and the pistol attachment was really fashionable primarily as a result of it allowed the pistol to be shouldered. On enchantment, that was raised instead justification for the judgment. However, in my opinion, the PTAB didn’t really rule on that situation within the first place.
The patentee appealed, however the Federal Circuit panel of Judges Reyna, Schall, and Chen affirmed with out opinion.