Evolusion Concepts, Inc. v. Hoc Events, Inc.

Case: 21-1963 Document: 36 Page: 1 Filed: 01/14/2022

United States Court of Appeals for the Federal Circuit ______________________

EVOLUSION CONCEPTS, INC., Plaintiff-Appellant

v.

HOC EVENTS, INC., DBA SUPERTOOL USA, Defendant ______________________

2021-1963 ______________________

Appeal from the United States District Court for the Central District of California in No. 2:19-cv-02736-JLS- DFM, Judge Josephine L. Staton.

------------------------------------------------

EVOLUSION CONCEPTS, INC., Plaintiff-Appellant

v.

JUGGERNAUT TACTICAL, INC., Defendant-Appellee ______________________

2021-1987 ______________________

Case: 21-1963 Document: 36 Page: 2 Filed: 01/14/2022 2 EVOLUSION CONCEPTS, INC. v. HOC EVENTS, INC.

Appeal from the United States District Court for the Central District of California in No. 8:18-cv-01378-JLS- DFM, Judge Josephine L. Staton. ______________________

Decided: January 14, 2022 ______________________

ALLEN MARCEL SOKAL, Insigne PC, Carlsbad, CA, ar- gued for plaintiff-appellant. Also represented by TREVOR CODDINGTON; DONNY SAMPORNA, Haley Guiliano LLP, San Jose, CA.

BOBBY BRAXTON, Braxton Perrone PLLC, Frisco, TX, argued for defendant-appellee. Also represented by GREGORY PERRONE. ______________________

Before PROST, TARANTO, and CHEN, Circuit Judges. TARANTO, Circuit Judge. Evolusion Concepts, Inc. owns U.S. Patent No. 8,756,845, titled “Method and Device for Converting Fire- arm with Detachable Magazine to a Firearm with Fixed Magazine.” In the main case before us, Evolusion sued Juggernaut Tactical, Inc. in the Central District of Califor- nia, alleging infringement of claims 1–3 and 8–10 of the ’845 patent. On the parties’ cross-motions for summary judgment regarding infringement, the district court granted Juggernaut summary judgment of non-infringe- ment. Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc., No. 8:18-cv-01378, 2021 U.S. Dist. LEXIS 77792, at *27 (C.D. Cal. Apr. 5, 2020) (Juggernaut Decision). The court’s key ruling was that the term “magazine catch bar” in the asserted claims of the ’845 patent excludes a factory- installed magazine catch bar. Id. at *13–22. That claim construction concededly precludes literal infringement, the court held, because Juggernaut’s products use the factory-

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installed magazine catch bar. Id. at *22–23. The court also determined that Juggernaut does not infringe under the doctrine of equivalents. Id. at *23–26. On Evolusion’s appeal, we hold that the term “maga- zine catch bar” in the asserted claims includes a factory- installed magazine catch bar. We therefore reverse the grant of summary judgment of non-infringement, reverse the denial of summary judgment of direct infringement as to the independent claims 1 and 8, and remand for further proceedings in Appeal No. 21-1987, which is the appeal in the Juggernaut case. We also vacate and remand in Appeal No. 21-1963, which involves a separate, related case, dis- cussed near the end of this opinion. I A The ’845 patent describes a device and method for con- verting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. ’845 patent, col. 2, lines 3–5. A detachable magazine allows a user to fire the weapon un- til the magazine is depleted, then simply release the mag- azine, insert a new magazine, and resume firing. Id., col. 1, lines 22–27. A fixed magazine, in contrast, can be re- moved and replaced only by disassembling certain non- magazine parts of the firearm, slowing the rate of fire. Id., col. 1, lines 50–53; col. 2, lines 20–28. The specification ex- plains that firearms with detachable magazines are likely to face increased legal restrictions. Id., col. 1, lines 63–64. In particular, the specification notes the introduction in Congress of a bill to enact the Assault Weapons Ban of 2013, which would have banned semi-automatic weapons with detachable magazines. Id., col. 1, lines 30–59. The patent describes a “standard OEM [original equip- ment manufacturer] semi-automatic rifle” as having a “magazine catch assembly” containing several components. Id., col. 2, lines 35–53. It then describes “[t]he invention”

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as a “permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” Id., col. 2, lines 55–58. At least in “one aspect of the present invention,” the resulting firearm contains “a lower receiver, a magazine catch bar, and an upper tension bar.” Id., col. 2, lines 65–67. The magazine catch bar can be attached to the lower receiver of the firearm and fit within a recess of the magazine well. Id., col. 2, line 67, through col. 3, line 2. The upper tension bar on the lower receiver applies pressure against the fire- arm’s upper receiver, rendering the magazine catch bar im- movable. Id., col. 3, lines 2–6. The magazine can be released only when the upper receiver is separated from the lower receiver. Id., col. 4, line 64, through col. 5, line 4; id., figs. 1 & 2. The specification also discusses a method of installing the invention, comprising removing the entire factory-installed magazine release button assembly, in- stalling a magazine catch bar onto the lower receiver, and installing an upper tension bar onto the lower receiver. Id., col. 3, lines 48–65. The ’845 patent has three independent claims. These claims are: 1. A firearm with a fixed magazine comprising a lower receiver having a magazine well configured to receive a magazine with a side-locking recess with a recess in the magazine well a magazine catch bar securely attached to the fire- arm, said magazine catch bar resting within the magazine side-locking recess an upper tension bar which extends towards and contacts the upper receiver. 8. A device for converting a firearm with a detach- able magazine into a firearm with a fixed magazine comprising

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A magazine catch bar securely attached to the lower receiver of said firearm, said magazine catch bar resting within the magazine side-locking recess An upper tension bar which extends towards and contacts the upper receiver. 15. A method for converting a firearm with a de- tachable magazine into a firearm with a fixed mag- azine comprising Removing the factory installed magazine release button assembly Said removal comprising the steps of depressing the magazine release button to a suffi- cient depth to permit the factory installed maga- zine catch bar to extend beyond the magazine well of the lower receiver, rotating the factory installed magazine catch bar in a counterclockwise fashion until the factory in- stalled magazine catch bar is unthreaded from the factory installed screw end of the magazine release button, removing all parts of the factory installed maga- zine release button assembly Installing a magazine catch bar to the lower re- ceiver of the firearm, said magazine catch bar rest- ing within the magazine side-locking recess Installing an upper tension bar to the lower re- ceiver of the firearm, said upper tension bar ex- tending towards and contacting the upper receiver. Id., col. 7, lines 27–35; col. 8, lines 4–10; col. 8, lines 47–67 (emphases added).

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B In August 2018, Evolusion sued Juggernaut for in- fringement of claims 1, 8, and 15 of the ’845 patent based on Juggernaut’s manufacture and sale of its “Hellfighter Mod Kits,” which convert a firearm with a detachable mag- azine into a firearm with a fixed magazine. Juggernaut asserted invalidity as an affirmative defense and filed a counterclaim for a declaratory judgment limited to non-in- fringement. Subsequently, Evolusion dropped its assertion of method claim 15 and added assertions of infringement of dependent claims 2–3 and 9–10 (apparatus claims). In claim-construction proceedings from May to July 2019, the only phrase for which the parties sought a construction was “upper tension bar,” but the court decided that no construc- tion was needed. Evolusion then sought summary judgment of direct in- fringement, as well as induced and contributory infringe- ment, of claims 1–3 and 8–10. Juggernaut, for its part, moved for summary judgment of non-infringement. At that time, construction of the term “magazine catch bar” became necessary, because in Juggernaut’s products the factory-installed magazine catch bar is retained in the con- version of a firearm to one with a fixed magazine. The par- ties agreed that whether Juggernaut infringes independent claims 1 and 8 “depends entirely on” whether the claim phrase “magazine catch bar” includes a factory- installed (OEM) magazine catch bar. Juggernaut Decision at *7. The district court concluded that the term “magazine catch bar,” as used in the claims and specification, excludes an OEM magazine catch bar. Id. at *16–17. The court based its determination primarily on the sentence in the specification that states: “The invention is a permanent fix- ture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” ’845 patent, col. 2, lines 55–58. Because the

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OEM magazine catch bar is one of the components removed to install “the invention,” the court determined that the “magazine catch bar” of the invention cannot be an OEM magazine catch bar. Juggernaut Decision at *17. The court also reasoned that the language of unasserted claim 15 supports its construction. Because claim 15 requires re- moving “the factory installed magazine catch bar” and then installing “a magazine catch bar,” the court concluded that the magazine catch bar that is installed must be “separate and distinct from the factory-installed magazine catch bar”; otherwise, “factory-installed” would be superfluous. Id. at *20–22. And because a term that appears in multiple claims should be given the same meaning in all those claims, the court held that the term “magazine catch bar” in claims 1 and 8 similarly must exclude a factory-installed magazine catch bar. Id. at *21. Under that construction, as noted, Juggernaut does not literally infringe independ- ent claims 1 and 8. Id. at *22. The court proceeded to rule that, under the construc- tion it had adopted, Juggernaut cannot infringe under the doctrine of equivalents. It reasoned that, by disclosing but not claiming a factory-installed magazine catch bar, Evolu- sion had dedicated a factory-installed magazine catch bar to the public. Id. at *25. It added that, because the terms “magazine catch bar” and “factory-installed magazine catch bar” are separately identified in the ’845 patent, the magazine catch bar of the claims cannot be an insubstan- tial alteration of a factory-installed magazine catch bar. Id. at *25–26. The court went on to explain that, because Juggernaut does not directly infringe claims 1 and 8, it does not directly infringe the other asserted claims, all dependent on claim 1 or claim 8; that, if there is no direct infringement, Jug- gernaut also does not indirectly infringe any asserted claims; and, finally, that the affirmative defense of invalid- ity need not be considered. Id. at *26–28. None of those

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rulings are disputed on appeal. The district court entered a final judgment of non-infringement in April 2021. Evolusion timely appealed. We have jurisdiction under 28 U.S.C. § 1295(a)(1). 1 II We begin with the claim-construction issue presented respecting claims 1 and 8. Claim construction is ultimately a question of law, decided de novo on review, as are the in- trinsic-evidence aspects of a claim-construction analysis. Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S. 318, 331 (2015). The district court relied for its claim construction in Juggernaut only on intrinsic evidence from the specifi- cation, see Juggernaut Decision at *16–22, and we there- fore review the construction de novo. The question is whether the term “magazine catch bar” in the asserted claims includes a factory-installed magazine catch bar. “[T]he words of a claim ‘are generally given their ordi- nary and customary meaning,’” as understood by a relevant artisan at the time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en banc) (citations omitted). A relevant artisan is not deemed to read a term in a vacuum, but instead “is deemed to read the claim term . . . in the context of the particular claim in which the dis- puted term appears,” and “in the context of the entire pa- tent, including the specification.” Id. at 1313. And because

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“claim terms are normally used consistently throughout the patent,” other claims of the patent, both asserted and unasserted, can provide insight into the meaning of a claim term. Id. at 1314; see also In re Varma, 816 F.3d 1353, 1363 (Fed. Cir. 2016) (“[T]he principle that the same phrase in different claims of the same patent should have the same meaning is a strong one, overcome only if ‘it is clear’ that the same phrase has different meanings in different claims.” (citation omitted)). Independent claims 1 and 8 claim a firearm and a de- vice, respectively, that contain “a magazine catch bar,” which is securely attached to the firearm and sits within the recess of the lower receiver. ’845 patent, col. 7, lines 27–35; col. 8, lines 4–10. Nothing in the language of claims 1 and 8 limits the scope of the generic term “magazine catch bar” to exclude one that was factory installed—specifically, as Juggernaut asserts, factory installed as part of an origi- nal firearm with a detachable magazine. Nor does Jugger- naut assert that either the ordinary meaning of the phrase itself, or any other language in these claims, points to such a restriction based on provenance. Juggernaut instead relies on unasserted claim 15, which, it argues, informs the meaning of “magazine catch bar” in claims 1 and 8 and precludes adopting the ordinary meaning of “magazine catch bar.” Juggernaut is correct that the meaning of the term in claims 1 and 8 could well be informed by a meaning of the term made sufficiently clear in claim 15. See Phillips, 415 F.3d at 1314. But Jug- gernaut is incorrect that the use of “magazine catch bar” in claim 15 narrows the meaning of the term to support the urged exclusion of factory-installed magazine catch bars. Independent claim 15 claims a method of removing the factory-installed magazine release button assembly and in- stalling a new device. The claim’s first step requires “re- moving all parts of the factory installed magazine release button assembly.” ’845 patent, col. 8, lines 47–67

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(emphasis added). One of the components of that assembly is “the factory installed magazine catch bar.” Id. The next steps involve installing two components: an upper tension bar and “a magazine catch bar.” Id. The invention thus involves removing and installing assemblies of parts—not only magazine catch bars. An instruction that identifies the removed assembly as including a factory-installed mag- azine catch bar, which focuses the process on conversion of what came from a factory, does not imply any preclusion of reuse of the same bar as one part of the assembly being installed in place of the removed assembly. The ordinary meaning of the claim language allows the factory-installed magazine catch bar to be removed as part of the initial as- sembly removal and reused as part of the assembly in- stalled in a later step. Accepting Juggernaut’s position would amount to read- ing additional limitations into claim 15 not required by its language. Claim 15 requires only “removing” a specific type of magazine catch bar (the one installed by the manu- facturer) and then installing “a magazine catch bar.” Id. (emphasis added). It does not require, as a removal step, “discarding” the OEM catch bar. Nor does it require in- stalling a “new” or “different” magazine catch bar. Jugger- naut argues that the use of “a” before “magazine catch bar,” instead of antecedent-basis language such as “said” or “the,” means that the two magazine catch bars must be dif- ferent. The use of antecedent-basis language like “said” or “the,” however, would have narrowed the term to cover only a factory installed magazine catch bar, and neither party advances that construction. The inventors, in the inde- pendent claims, did not choose to claim a device with a “new” or “different” magazine catch bar, but instead a de- vice with “a magazine catch bar,” which, by its ordinary meaning, could be either the removed catch bar or a new or different catch bar. The specification supports the ordinary-meaning inter- pretation of “magazine catch bar.” Phillips, 415 F.3d at

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1315 (“[C]laims must be read in view of the specification, of which they are part.” (internal quotation marks and cita- tion omitted)). The specification nowhere limits the scope of a “magazine catch bar” to exclude factory-installed ones from the assembly that achieves the fixed-magazine goal. Nor, contrary to a suggestion made by Juggernaut, does it explain that only a customized or modified magazine catch bar, one necessarily different from what was factory in- stalled, may be used on the firearm. It simply explains that the described embodiments of the invention all include a “magazine catch bar” that can be securely attached to the lower receiver of the firearm, and consistently describes the component in generic terms. Id., col. 2, line 65, through col. 3, line 2; see also id., col. 5, lines 5–7. Juggernaut argues, and Evolusion concedes, that the disclosed embodiments do not illustrate OEM magazine catch bars. See id., figs. 3 & 4. But that cannot make a difference in this case. We have repeatedly held that “it is not enough that the only embodiments, or all of the embod- iments, contain a particular limitation to limit claims be- yond their plain meaning.” Unwired Planet, LLC v. Apple, Inc., 829 F.3d 1353, 1359 (Fed. Cir. 2016) (internal quota- tion marks and citation omitted). Here, nothing in the specification suggests that factory (or OEM) provenance of a bar disqualifies it from being part of the invention if, as a structural matter, it is a magazine catch bar under the ordinary meaning. And nothing in the specification sug- gests that factory (or OEM) installation precludes the pos- session of the structural features required by the invention. The specification reiterates the background principle that the claims are not limited to the illustrated embodiments. ’845 patent, col. 4, lines 46–53. And it describes and illus- trates at least one embodiment in which the magazine catch bar is a separate element from the upper tension bar, id., col. 5, lines 5–10, 17–20; id., fig. 3, reinforcing the idea that there is no requirement to replace each individual

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component in the assembly in order to replace the assem- bly as a whole. The district court relied primarily on one sentence of the specification to conclude that the specification excludes a factory-installed magazine catch bar: “The invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” ’845 patent, col. 2, lines 55–58. But that statement has the same character as what is found in claim 15. For the reasons already discussed with respect to claim 15, the specification sentence does not pre- clude the installation of a factory-installed magazine catch bar. Finally, Juggernaut argues that the patent is “abun- dantly clear” that the invention cannot function with the OEM magazine catch assembly. Juggernaut’s Opening Br. at 8. But Juggernaut fails to cite to any portion of the spec- ification that supports this operability assertion. We thus construe the term “magazine catch bar” ac- cording to its ordinary meaning, which includes a factory- installed magazine catch bar. This construction not only requires reversal of the grant of summary judgment to Jug- gernaut—all parts of which relied on the claim construc- tion we have held to be incorrect as a matter of law. It also requires reversal of the denial of summary judgment of in- fringement to Evolusion as to claims 1 and 8, because the parties have agreed that direct infringement of claims 1 and 8 is established if the term “magazine catch bar” is con- strued to include a factory-installed magazine catch bar. Oral Arg. at 29:55–30:15 (Juggernaut’s counsel conceding that the “sole issue” of literal infringement of claim 1 and 8 is the construction of “magazine catch bar”); see also Jug- gernaut Decision at *7. There is no such agreement about the dependent claims, which must be reconsidered on re- mand, along with any issues in the case about indirect in- fringement or the affirmative defense of invalidity. The

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district court’s determination that it need not reach those issues depended on its conclusions we reverse here. We reverse the court’s grant of summary judgment of no infringement, reverse the court’s denial of summary judgment of infringement of claims 1 and 8, and remand for the district court to address the other asserted claims. Because we reverse the court’s determination of literal in- fringement, we need not reach the court’s determination of infringement under the doctrine of equivalents. We vacate the award of attorney’s fees because Juggernaut is no longer a prevailing party, a status required to receive a fee award under 35 U.S.C. § 285. III Appeal No. 21-1963 involves a separate infringement action brought by Evolusion against HOC Events, Inc., dba Supertool USA, alleging infringement of both product and method claims of the ’845 patent. When HOC failed to re- spond to the complaint, the clerk of the district court en- tered a “default” under Federal Rule of Civil Procedure 55(a). With the requests for relief not yet adjudicated, Evo- lusion moved for a “default judgment” under Rule 55(b), but the court denied the motion. In its denial, the court, citing its ruling in the Juggernaut case, stated that Evolu- sion failed to state a viable claim for infringement against HOC, because HOC’s products require reusing the factory- installed magazine catch bar. Evolusion Concepts, Inc. v. HOC Events, Inc., No. 2:19-cv-02736, 2021 WL 2007068 (C.D. Cal. Apr. 14, 2021). Evolusion noticed an appeal from the April 14 order. HOC has not appeared on appeal. The April 14 order on its face merely denies Evolusion a judgment in its favor; it does not order any judgment against Evolusion, let alone a final judgment. Nor is the clerk-entered Rule 55(a) “default” a final judgment against Evolusion. See 15A C. Wright & A. Miller, Federal Practice and Procedure § 3914.5 & nn.¹.50 & 2 (2d ed.). But, alt- hough Evolusion has not addressed the jurisdictional

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finality problem raised by those facts, we think it proper to treat the April 14 order as a final judgment. The order de- clares that Evolusion has no claim it can pursue, and in light of that declaration there was evidently nothing left to do in the litigation in district court after the April 14 order. Indeed, the clerk notified the Patent and Trademark Office of termination of the case on the same date, and the court’s official electronic docket records the case as closed. In these circumstances, we treat the April 14 order as a final judgment, which we have jurisdiction to review under 28 U.S.C. § 1295(a)(1). For the reasons set forth in our discus- sion of the Juggernaut case, we vacate the April 14 order in the HOC case and remand for further proceedings con- sistent with this opinion. IV For the foregoing reasons, we reverse the entry of sum- mary judgment of non-infringement, reverse the denial of summary judgment of direct infringement as to claims 1 and 8, vacate the award of attorney’s fees, and remand for further proceedings consistent with our claim construction in Appeal No. 21-1987. We vacate and remand in Appeal No. 21-1963. The parties shall bear their own costs. REVERSED IN PART, VACATED IN PART, AND REMANDED

Footnotes

[1] On October 26, 2021, the district court issued an order granting attorney’s fees to Juggernaut as a “prevail- ing party” under 35 U.S.C. § 285. On November 24, 2021, the court issued an amended final judgment incorporating the award of attorney’s fees. On December 3, 2021, Evolu- sion filed an amended notice of appeal to include, in this appeal, the district court’s final judgment granting attor- ney’s fees to Juggernaut. Juggernaut has not objected to inclusion of that order in this appeal.