by Dennis Crouch
This case has a low chance of being granted certiorari, but it still has some interesting elements regarding claim construction and procedure. This is a perfect case for the Supreme Court to issue a GVR (Grant-Vacate-Remand) with an order to the Federal Circuit to explain its reasoning.
The setup is common. Tactical sued Sig Sauer for patent infringement; Sig Sauer responded with an IPR petition that was eventually successful. Tactical appealed based upon the PTAB’s sua sponte claim construction that found the preamble to be limiting, but the Federal Circuit Affirmed without opinion.
The Supreme Court petition asks three questions:
- Whether the claim construction finding the preamble limiting was improper.
- Whether the PTAB violated due process by construing the term sua sponte and failing to give the patentee with notice or an opportunity to present evidence.
- Whether the Federal Circuit’s use of Rule 36 violates constitutional guarantees of due process and the statutory protections of 35 U.S.C. 144.
The Tactical patents cover a forearm stabilizing brace that can be attached to a pistol. U.S. Patent Numbers 8,869,444 and 9,354,021. Sig Sauer initially was a distributor of Tactical’s product, but later began making its own competing product. At that point Tactical sued.
In the IPR petition, Sig Sauer did not request any claim construction. Likewise, the petition decision granting the IPR stated that no claim terms needed any express construction. “We agree—we need not expressly construe any claim term
to resolve the parties’ dispute.” During briefing, neither party requested construction of any aspect of the claim preambles. Eventually though, in its final written decision, the PTAB interpreted the preambles as limiting and then used that construction to conclude that the claims were invalid as obvious.
Yes, I said that the narrow construction led to the claims being found invalid. That is unusual — usually the addition of limitations helps to avoid the prior art. In this case though the focus was on objective indicia of non-obviousness. NST’s sales; copying by Sig; praise; etc. But, by giving weight to the preamble terms, the PTAB was able to destroy the presumed nexus between the claims and NST’s product. The result, those secondary indicia were found wanting because NST had not provided additional evidence “commensurate with the claims” as newly construed.
For context, the claims are directed to the attachment, but the preamble recites “a handgun” and “a support structure extending rearwardly from the rear of the handgun:”
1. A forearm-gripping stabilizing attachment for a handgun, the handgun having a support structure extending rearwardly from the rear end of the handgun, the forearm-gripping stabilizing attachment, comprising: . . .
The PTAB ruled that the claims require the handgun and also the support structure as recited in the preamble along with the forearm attachment described in the body. The problem for the patentee is that its objective indicia evidence focused on the forearm attachment, not the whole package. Thus, no nexus and no weight given to those secondary factors. In its decision, the PTAB when through the whole life and meaning analysis: “we conclude that the preambles of claims 1, 3, and 5 are ‘necessary to give life, meaning, and vitality to the claim[s],’ and, as such, are limiting.”
The case was already close because there is a long history of this sort of stabilizer going back to the 19th Century, and so the absence of secondary considerations led to the obviousness conclusion.
During the IPR trial, Sig Sauer had argued that the high sales were due to an odd regulatory scheme against semi-automatic rifles, and the pistol attachment was actually popular primarily because it allowed the pistol to be shouldered. On appeal, that was raised as an alternative justification for the judgment. But, in my view, the PTAB did not actually rule on that issue in the first place.
The patentee appealed, but the Federal Circuit panel of Judges Reyna, Schall, and Chen affirmed without opinion.