by Dennis Crouch
This case has a low likelihood of being granted certiorari, but it surely nonetheless has some attention-grabbing components concerning declare building and process. This can be a good case for the Supreme Court docket to challenge a GVR (Grant-Vacate-Remand) with an order to the Federal Circuit to elucidate its reasoning.
The setup is frequent. 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 building that discovered the preamble to be limiting, however the Federal Circuit Affirmed with out opinion.
The Supreme Court docket petition asks three questions:
- Whether or not the declare building 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 present the patentee with discover or a possibility 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 connected 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 building. Likewise, the petition resolution granting the IPR said that no declare phrases wanted any categorical building. “We agree—we want not expressly construe any declare time period
to resolve the events’ dispute.” Throughout briefing, neither celebration requested building of any side of the declare preambles. Finally although, in its closing written resolution, the PTAB interpreted the preambles as limiting after which used that building to conclude that the claims have been invalid as apparent.
Sure, I mentioned that the slim building led to the claims being discovered invalid. That’s uncommon — often the addition of limitations helps to keep away from the prior artwork. On this case although the main target was on goal indicia of non-obviousness. NST’s gross sales; copying by Sig; reward; and many others. However, by giving weight to the preamble phrases, the PTAB was in a position to destroy the presumed nexus between the claims and NST’s product. The outcome, these secondary indicia have been discovered wanting as a result of NST had not offered 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 ‘essential to present 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 form of stabilizer going again to the nineteenth Century, and so the absence of secondary concerns led to the obviousness conclusion.
In the course of the IPR trial, Sig Sauer had argued that the excessive gross sales have been on account of an odd regulatory scheme towards semi-automatic rifles, and the pistol attachment was truly in style primarily as a result of it allowed the pistol to be shouldered. On enchantment, that was raised in its place justification for the judgment. However, in my opinion, the PTAB didn’t truly rule on that challenge within the first place.
The patentee appealed, however the Federal Circuit panel of Judges Reyna, Schall, and Chen affirmed with out opinion.