Cross Armory loses its Mandamus Appeal against AR Maglock

by Dennis Crouch

In re Cross Engineering, LLC (Fed. Cir. 2020) (Cross Armory) [CrossArmoryPetition]

Evolution Concept’s U.S. Patent No. 8,756,845 covers an AR-15 semi-automatic rifle converted to have a small fixed-magazine. (Sold as the AR Maglock).  The patent explains that the motivation for the change is to avoid the proposed “Assault Weapons Ban of 2013” in the wake of the Sandy Hook Elementary School Shooting.  That Bill (never passed) would have banned certain semi-automatic weapons with a detachable magazine.  However, California’s assault weapon ban created a market for the modification.  My understanding is that the proposed modification here is easy to undo as well in case someone wanted to go-back to having removable magazines.

Evolution sued competitor Cross Armory for infringement and after some amount of litigation, the parties entered into a courthouse settlement agreement that Cross would pay 19% royalty for its sales of “every accused product.”  The parties also agreed to give Magistrate Judge Berg (who mediated the settlement) “authority to achieve finality regarding disputes” about the settlement and agreed that any decision by Judge Berg would be “FINAL AND BINDING WITH NO APPEAL.” The expectation here was that a more fully and complete agreement would be forthcoming.

Cross then refused to pay the amount Evolution thought it was owed.  Judge Berg ordered Cross to pay the money–finding that certain “kits” were also licensed products requiring royalty payments. Judge Berg also ordered the parties to sign a finalized agreement that he approved.

Cross then petitioned the Federal Circuit on writ of mandamus, which the court has now denied.

Right to Appeal: The court began its brief analysis with discussion of Cross’s waiver of its right to appeal.  The court explained “That agreement would seem on its face to waive further review of these decisions, or at least suggest that we should not exercise our discretion to review them.”

On the merits: The court went on to look a bit into the merits of the case — holding that “Cross has not shown a clear and indisputable right to its requested relief” and thus is not deserving of a mandamus order.

Cross’s basic argument was that its “kits” were not supposed to be included in the term ‘accused products.’  On appeal, the Federal Circuit noted that the original courthouse settlement agreement did not define the term.  However, Cross “consented” to having the Magistrate Judge decide all disputes regarding the settlement.  Further, there is no presentation of “any judicial usurpation of power or clear abuse of discretion” that might require action by a superior court.

Mandamus denied.

6 thoughts on “Cross Armory loses its Mandamus Appeal against AR Maglock

  1. 3

    You just put together little metal pieces to get the functionality you want. It is all obvoius.

    1. 2.1

      They are still there.

      Just like the comments in this section, they ‘time out,’ and the running count indicator disappears when comments can no longer be added.

      It’s just that the Hricik section is like a secondary, perhaps tertiary gig, and the flow of posts are lacking.

  2. 1

    It is fairly common for “running royalty” patent agreements [as here] to have royalty payment disputes over the royalty base, even when based on sales of products that “infringe” the subject patent, but especially with other less legally well defined royalty base definitions like sales of “every accused product” [as here] or “the patented portion” of a sold product. [Even with a well written binding arbitration agreement with a patent attorney arbitrator and a sales auditing provision.]
    There is another reason why “running royalty” patent agreements are far less common than the used to be in general. Namely, that agreement clauses not to contest validity of a patent even in a reexamination or IPR [and thus possibly escape further royalties] have been considered unenforceable on public policy grounds by many.

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