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IPR Petition Cannot Be Based on Applicant Admitted Prior Art

by Thomas DaMario | Feb 10, 2022 | Patents

Addressing the type of prior art that may form the basis of an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit vacated an unpatentability finding based on “applicant admitted prior art” in the challenged patent. Qualcomm Inc. v. Apple Inc., Case Nos. 20-1558, -1559 (Fed. Cir. Feb. 1, 2022) (Taranto, Bryson, Chen, JJ.)

Qualcomm owns a patent directed to integrated circuit devices having power detection circuits for systems with multiple supply voltages. The patent seeks to solve problems associated with stray currents causing level shifters in integrated circuits to trigger input/output devices for transmission, which results in erroneous output signals from the circuit. The patent describes various prior art methods for solving the stray current problem.

Apple filed IPR petitions based on two grounds. The first was based on the combination of four prior art references. In its final written decision, the Patent Trial & Appeal Board (Board) found that the combination of these four references did not render the challenged claims invalid. The second ground relied on the applicant admitted prior art disclosed in the specification of the challenged patent in combination with another prior art reference (Majcherczak). During the IPR proceedings, Qualcomm admitted that the combination of the applicant admitted prior art and Majcherczak taught every element of the challenged claims but argued that Apple’s use of the applicant admitted prior art as the basis for an invalidity ground is barred in an IPR proceeding. The Board disagreed with Qualcomm and found the challenged claims unpatentable based on Apple’s second ground. Qualcomm appealed.

Qualcomm argued on appeal that IPR proceedings may only be based on “prior art patents or prior art printed publications” and that 35 U.S.C. § 311(b), which governs IPR proceedings, does not allow for the use of “a patent owner’s admissions” that is contained in non-prior art documents. Apple countered, arguing that any prior art that is contained in “any patent or printed publication, regardless of whether the document itself is prior art, can be used as a basis for [an invalidity] challenge.”

The Federal Circuit agreed with Qualcomm, finding that applicant admitted prior art in a challenged patent may not form the “basis” for an invalidity claim in an IPR proceeding. The Court explained that invalidity grounds advanced in an IPR must be based on patents or printed publications that are themselves prior art to the challenged patent. In reaching this conclusion, the Court relied on the 2019 Supreme Court opinion in Return Mail, Inc. v. U.S. Postal Serv., which referred to “patents and printed publications” in the context of § 311(b) as “existing at the time of the patent application.” The Court also looked to its own interpretations of “prior art consisting of patents or printed publications” in the context of ex parte reexamination proceedings under 35 U.S.C. §§ 301 and 303, which “permits the Director to institute a reexamination after ‘consideration of other patents or printed publications.’” Accordingly, the Court vacated the unpatentability [...]

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Alleged Trademark Infringer Remains Hog-Tied after Appeal

by Paul Devinsky | Feb 3, 2022 | Trademarks

The US Court of Appeals for the Tenth Circuit dismissed an appeal of a district court order denying a stay of a federal action for lack of jurisdiction under 28 U.S.C. § 1291 and reversed in part the district court’s grant of a preliminary injunction. The Trial Lawyers College v. Gerry Spence Trial Lawyers College at Thunderhead Ranch, Case No. 20-8038 (10th Cir. Jan. 27, 2022) (Bacharach, Briscoe, Murphy, JJ.).

The dispute between the parties arose out of a program called The Trial Lawyers College at Thunderhead Ranch in Wyoming. The College’s board of directors split into two factions known as the “Spence Group” and the “Sloan Group.” After the split, the two groups sued each other. The Spence Group sued in state court for dissolution of the College and a declaratory judgment regarding control of the board of directors. The Sloan Group sued in federal court claiming trademark infringement under the Lanham Act.

Both groups sought relief in the federal case. The Spence Group filed a motion to stay the federal court proceedings in light of the state court proceedings, and the Sloan Group requested a preliminary injunction. The district court denied the Spence Group’s stay and granted the Sloan Group’s request for a preliminary injunction. The Spence Group appealed both rulings.

The Tenth Circuit found that it lacked jurisdiction to review the district court’s stay denial. First, the state court resolved the dispute concerning board control, rendering part of the requested stay moot. Second, the Court determined that it lacked jurisdiction over the remaining motion for stay because it was not a final order. The Court explained that it needed to decide the appealability of the ruling based on the category of order rather than the particular facts of the case. The Court found that there was no unsettled issue of unique urgency or importance that warranted the Court exercising jurisdiction over the denial of the stay. Specifically, the Court explained that piecemeal litigation was unlikely because the state court already decided the issue of board control, and the Spence Group did not identify an unsettled issue of unique urgency.

The Tenth Circuit did exercise jurisdiction over the district court’s grant of a preliminary injunction. The Spence Group challenged the district court’s finding of irreparable harm, the order to remove sculptures bearing the College’s name, restrictions on what the Spence Group could say and the consideration of evidence presented after the hearing ended. The Court reviewed the district court’s findings under an abuse-of-discretion standard. The Court found that the district court did not abuse its discretion by finding irreparable harm, considering evidence after the hearing and enjoining the Spence Group from using words associated with the College. The Court explained that the district court reasonably found irreparable harm based on the College’s efforts to protect its name, logo and trademarks, as well as evidence of likely confusion among customers of the College based on the Spence Group’s use of those trademarks. As for the sculptures, the Court found [...]

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Establishing Indefiniteness Requires More Than Identifying “Unanswered Questions”

by Art Dykhuis | Feb 3, 2022 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court finding of indefiniteness for focusing solely on the language of the claims and ignoring the specification and prosecution history. Nature Simulation Systems Inc. v. Autodesk, Inc., Case No. 20-2257 (Fed. Cir. Jan. 27, 2022) (Newman, Lourie JJ.) (Dyk, J., dissenting).

Nature Simulations Systems (NSS) asserted two patents against Autodesk that relate to packaging computer-aided data for three-dimensional objects. According to the patents, the claimed methods are improvements upon a “Watson” method known in the prior art. Following a Markman hearing that included technology tutorials from the named inventor and Autodesk’s expert, the district court considered whether two terms were indefinite: “searching neighboring triangles of the last triangle pair that holds the last intersection point” and “modified Watson method.”

The district court found both claim terms indefinite based on “unanswered questions” identified by Autodesk’s expert, who had raised three and four unanswered questions for the “searching” and “modified Watson” terms, respectively. NSS argued that all of the questions were answered in the specification, but the court held that “the claim language, standing alone” did not answer those questions. NSS appealed.

The Federal Circuit found flaws in the district court’s analysis because it adopted an incorrect “unanswered questions” analysis and analyzed the “claim language, standing alone.” The Court confirmed that the test for indefiniteness involves analyzing whether the claims provide reasonable certainty when viewed in light of the specification and prosecution history from the perspective of the person of ordinary skill in the art. Reviewing the specification, the Court observed that the text and figures of the specification of the asserted patents described the searching and intersection point process and the prior art Watson method and noted that the district court “declined to consider information in the specification that was not included in the claims.”

Reviewing the prosecution history, the Court further noted that both terms had been rejected during prosecution for indefiniteness, but that the examiner withdrew both rejections after amendments to the claims provided additional limitations. The Court faulted the district court for giving “no weight to the prosecution history showing the resolution of indefiniteness by adding the designated technologic limitations to the claims.” Instead, “PTO examiners are entitled to appropriate deference as official agency actions[.]” Ultimately, the Court observed that the claims were improvements to known methods, that it was undisputed the claims were described and enabled and that the examiner had held the claims to “define the scope of the patent subject matter.” For these reasons, indefiniteness was not established as a matter of law.

Judge Timothy B. Dyk dissented, stating that “[t]he fact that a patent examiner introduced the indefinite language does not absolve the claims from the requirements of 35 U.S.C. § 112.” Far from adopting a flawed “unanswered questions” analysis, Judge Dyk instead believed the court’s analysis was detailed and thorough, and that it was performed in view of the specification. Judge Dyk found the majority’s definition of the disputed terms inconsistent [...]

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Can’t Presume Personal Jurisdiction Exists When Challenged

by Lisa P. Rumin, Claire Danberg and Joshua W. Eastby | Feb 3, 2022 | Trademarks

The US Court of Appeals for the First Circuit affirmed a district court order dismissing a trademark infringement case for lack of personal jurisdiction, finding that if challenged, personal jurisdiction cannot be assumed into existence. Motus, LLC v. CarData Consultants, Inc., Case No. 21-1226 (1st Cir. Jan. 18, 2022) (Lynch, Selya, McConnell, JJ.)

Motus is a Delaware corporation headquartered in Boston, Massachusetts. CarData is a Canadian corporation with offices in Colorado, New York and Toronto. Both Motus and CarData offer tools for companies to manage employee expense reimbursement. Motus asserted a trademark over the phrase “corporate reimbursement services,” which was present in the meta title of CarData’s website. In November 2019, Motus asked CarData to remove the phrase from its website, and CarData did so within three days.

Motus nevertheless filed a federal lawsuit in the District of Massachusetts asserting Lanham Act claims for trademark infringement, trademark dilution and other state and federal causes of action. CarData moved to dismiss for lack of personal jurisdiction, among other grounds. The district court granted the motion to dismiss, finding that Motus failed to demonstrate either the existence of personal jurisdiction over CarData or that discovery into CarData’s jurisdictional claims were warranted. Motus appealed.

On appeal, the First Circuit reiterated that Motus bore the burden of demonstrating that the district court’s exercise of personal jurisdiction over CarData was proper, noting that although a plaintiff is not required to plead facts sufficient for personal jurisdiction, “it must—if challenged—ensure that the record contains such facts.” To demonstrate that personal jurisdiction over CarData was proper, Motus had to show that CarData had sufficient “minimum contacts” with the forum that were sufficiently related to the matter at issue and evidenced a “purposeful availment of the privilege of conducting business in the forum,” and also had to show the reasonableness of the exercise of personal jurisdiction in that forum. Motus argued that CarData had sufficient “minimum contacts” with Massachusetts for personal jurisdiction to lie there, primarily because CarData had offices elsewhere in the United States and because CarData maintained a website that was available to serve Massachusetts residents.

Given that Motus’s arguments for personal jurisdiction related primarily to the publicly available nature of CarData’s website to residents of Massachusetts, the First Circuit explained that “[i]n website cases we have recognized that the ‘purposeful availment’ element often proves dispositive.” Here, the Court found nothing in the record suggesting that CarData specifically targeted or did business with Massachusetts residents. The Court rejected Motus’s citation to informational content on the website because it was not specific enough to evidence intentional solicitation of business from any particular state. Nor was there evidence of substantial CarData revenue from Massachusetts. Thus, the Court found that there was no “purposeful availment.”

Finally, the First Circuit affirmed the district court’s denial of jurisdictional discovery into CarData’s “minimum contacts” with Massachusetts. The Court found that although Motus mentioned the availability of jurisdictional discovery in a single sentence in a footnote to its opposition to CarData’s motion to [...]

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#Blessed? Preliminary Injunction Related to Social Media Accounts Vacated

by Eleanor B. Atkins | Feb 3, 2022 | Trademarks

Addressing a dispute between a bridal designer and her former employer regarding the use of the designer’s name and control of various social media accounts, the US Court of Appeals for the Second Circuit affirmed the district court’s preliminary injunction prohibiting the designer from using her name(s) in commerce, vacated the portion of the preliminary injunction granting the employer exclusive control over the social media accounts and remanded the case for further consideration by the district court. JLM Couture, Inc. v. Gutman, Case No. 21-870 (2d Cir. Jan. 25, 2022) (Park, J.) (Newman, J., concurring in part and dissenting in part) (Lynch, J., concurring in part and dissenting in part).

Hayley Paige Gutman worked for JLM Couture from 2011 to 2020, during which time she designed bridal and bridesmaid dresses and developed the Hayley Paige brand. Hayley Paige brand apparel generated hundreds of millions of dollars in sales, and Gutman’s fame (and social media account followers) grew alongside the brand’s sales revenue. Gutman and JLM’s relationship began to break down in 2019. Following the parties’ failed contract negotiations, Gutman locked JLM out of her Instagram account and changed the account bio to indicate that it was a “personal and creative” account.

JLM subsequently sued Gutman for breach of contract, trademark dilution, unfair competition, conversion of social media accounts and trespass to chattels on social media accounts, among other things. The district court agreed with JLM that Gutman had breached the contract but declined to decide “whether JLM had shown a likelihood of success on its conversion and trespass claims or opine on the ‘novel’ and ‘nuanced’ question of who owns the [social media accounts].” The district court granted a temporary restraining order and then a preliminary injunction barring Gutman from changing, using and/or controlling the social media accounts and using the names “Hayley,” “Paige,” “Hayley Paige Gutman,” “Hayley Gutman,” “Hayley Paige” or any derivate thereof (collectively, the designer’s name) in commerce. Gutman appealed.

Gutman argued that the district court erred in concluding that she likely breached the noncompete and name-rights provisions of the employment contract, that JLM’s breach of the contract prohibited it from seeking injunctive relief and that the social media accounts should not have been assigned to JLM. The Second Circuit rejected Gutman’s contract-related arguments and disagreed with the proffered alternative interpretations of the text, concluding that the district court did not err in prohibiting Gutman from any use of the designer’s name in commerce. With respect to the social media accounts, however, the Court held that the preliminary injunction was overbroad because “the character of the district court’s relief—a grant of perpetual, unrestricted, and exclusive control throughout the litigation—sounds in property, not in contract. Yet the district court disclaimed any effort to ground the [preliminary injunction] on its evaluation of the ownership question.” The Court concluded it was “unclear on what basis the district court excluded Gutman from using the Disputed Accounts and granted total control to JLM.” Thus, the Court remanded the case for the district [...]

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Nailed It: Expert Must at Least Meet Ordinary Skill Level to Testify from POSITA Perspective

by Alexander P. Ott | Jan 27, 2022 | Patents

Addressing a US International Trade Commission (ITC) decision finding a § 337 violation as to one patent but no violation as to four other patents, the US Court of Appeals for the Federal Circuit reiterated that a technical expert must at least meet the level of ordinary skill in the art of the asserted patents to testify from the perspective of a person of ordinary skill in the art (POSITA), whether for claim construction, validity or infringement. Kyocera Senco Indus. Tools Inc. v. ITC, Case Nos. 20-1046, -2050 (Fed. Cir. Jan. 21, 2022) (Moore, C.J.; Dyk, Cunningham, JJ.)

In 2017, Kyocera filed a complaint at the ITC seeking a § 337 investigation based on infringement allegations for six patents directed to battery-powered gas spring nail guns. The investigation was assigned to the Chief Administrative Law Judge (ALJ), who, in the context of a Markman order, adopted Koki Holdings America Ltd.’s uncontested level of skill in the art as including “experience in powered nailer design.” After claim construction, Kyocera dropped one patent from the investigation and went forward with infringement under the doctrine of equivalents as the sole basis for violation for four other patents.

Prior to the evidentiary hearing, Koki moved to exclude Kyocera’s expert’s testimony due to their admission during deposition that they did not have the experience in powered nailer design required by the adopted level of ordinary skill in the art. The Chief ALJ held that the Federal Circuit’s decision in AquaTex Indus. v. Techniche Sols. expressly required that Kyocera’s expert’s testimony be excluded as to infringement under the doctrine of equivalents but permitted the expert to testify as to literal infringement on one patent and on claim construction. After the evidentiary hearing, the Chief ALJ issued an initial determination that relied, in part, on Kyocera’s expert to find a particular element satisfied on the one remaining patent where literal infringement was asserted, but ultimately found no infringement due to other claim limitations. The Chief ALJ’s noninfringement decision as to the one remaining patent was then overturned on review by the full ITC, which found a § 337 violation and issued a limited exclusion order.

Kyocera appealed the Chief ALJ’s exclusion of its expert’s testimony on doctrine of equivalents, and Koki cross-appealed on the Chief ALJ’s decision to allow Kyocera’s expert to testify as to literal infringement and claim construction. The Federal Circuit reversed the ITC’s decision, holding that it was error to permit any infringement testimony from Kyocera’s expert and explaining that a witness must at least have ordinary skill in the art to offer testimony from the perspective of a skilled artisan for claim construction, validity or infringement, whether literal or under the doctrine of equivalents.

Alexander Ott was a member of Koki’s ITC trial team and the Federal Circuit appeal team in this case.

Sixth Circuit Endorses Sealing of Filings to Protect Confidentiality of Alleged Trade Secrets

by Paul Devinsky | Jan 27, 2022 | Trade Secrets

On appeal from a dismissal based on a failure to state a claim for misappropriation of trade secrets, the US Court of Appeals for the Sixth Circuit granted the litigants’ motion to seal their briefs and file publicly available redacted versions in order to protect the confidentiality of the appellant’s alleged trade secrets. Magnesium Machine, LLC v. Terves, LLC, Case No. 20-3998 (6th Cir. Jan. 14, 2022) (Donald, J.)

The Sixth Circuit reasoned that the case had been brought under the Defend Trade Secrets Act, which requires courts to take “action as may be necessary and appropriate to preserve the confidentiality of trade secrets.” The Court also relied on precedent to the effect that trade secrets generally provide a justification (i.e., a “compelling reason”) for sealing. The Court left open the possibility of reconsidering its ruling if it later determines that any of the redacted information should be made available to the public.

Practice Note: Public disclosure—even in a court document—can destroy a trade secret. Litigants should be careful when disclosing information that is even alleged to be a trade secret, even if they are not certain whether the information qualifies as a trade secret since, if and when litigated, the information may later be held to qualify.

Appeal Shuttered for Lack of Finality

by Paul Devinsky | Jan 27, 2022 | Trademarks

The US Court of Appeals for the Eighth Circuit held that it lacked jurisdiction under 28 U.S.C. § 1291 and therefore dismissed an appeal of a district court decision staying a federal action pending state court litigation between the parties. Window World Int.’l, LLC et al. v. O’Toole et al., Case No. 21-1108 (8th Cir. Jan. 7, 2022) (Loken, Colloton, Benton, JJ.).

Window World International owns registered trademarks for the marketing of exterior remodeling products, such as custom-made vinyl windows. Window World distributes products through 200 independently owned and operated franchisees, including Window World of St. Louis, Inc. and Window World of Springfield-Peoria, Inc., companies co-owned by James T. Lomax III (collectively, the Lomax parties). Window World sublicenses its franchisees to use its trademarks.

In January 2015, the Lomax parties and other Window World franchisees sued Window World in the North Carolina Business Court. The Lomax parties alleged that Window World failed to make franchise disclosures required by federal and state law. They also asserted claims of fraud and breach of contract. In April 2019, the Lomax parties sent letters to Window World customers making several misrepresentations about Window World’s product warranty. Window World commenced action in federal court, asserting causes of action under the Lanham Act for false advertising, trademark infringement, unfair competition and dilution of a famous mark.

The Lomax parties moved to dismiss for failure to state a claim or stay the federal action pursuant to the Supreme Court’s 1976 decision in Colorado River Water Conservation Dist. v. US, which held that the interests of effective judicial administration may lead a federal court to reject taking jurisdiction in a case involving a concurrent state proceeding. Window World opposed the dismissal and stay requests. The district court dismissed several of Window World’s claims but ruled that it had a plausible trademark infringement and unfair competition claim and denied dismissal as to those claims. The district court also stayed the federal action pending determination of the scope of the claims regarding the protected marks in the North Carolina litigation. Window World appealed.

The Eighth Circuit found that the issued stay order was neither a final order under 28 U.S.C. § 1291 nor a collateral interlocutory order that may be appealed. As a result, the Court dismissed the appeal for lack of jurisdiction. In doing so, the Court explained that an order staying civil proceedings is interlocutory and not ordinarily a final decision for purposes of § 1291. However, if the stay effectively ends the litigation, then the order is final and jurisdiction under § 1291 is proper. Here, the Court concluded that the lower court’s stay was not a final order because the order contemplated further litigation in federal court. Additionally, the stay was not a final order merely because it had the practical effect of allowing a state court to be the first to rule on common issues. Therefore, the Court concluded that the stay order was not appealable as a final order and dismissed the appeal.

Power Play: District Court Properly Transferred Bad Faith Anticipatory Suit

by Tessa Kroll | Jan 27, 2022 | Patents

The US Court of Appeals for the Federal Circuit denied a petition for mandamus relief from an order transferring a first-filed declaratory judgment action from the District of New Jersey to the Western District of Texas, finding that the district court did not abuse its discretion in departing from the first-to-file rule. In re Amperex Tech. Ltd., Case No. 22-105 (Fed. Cir. Jan. 14, 2022) (Lourie, Prost, Taranto, JJ.) (per curiam).

Maxell, Ltd. owns patents related to lithium-ion battery technology. To facilitate licensing discussions regarding Maxell’s patents, Maxell and Amperex entered into a non-disclosure agreement (NDA) stipulating that neither party would sue the other for one year. At the end of the one-year period, Amperex proposed extending the NDA because the parties had not reached an agreement. Maxell replied that Amperex’s products infringed Maxell’s patents and cautioned that if “Maxell and Amperex are not able to enter into a licensing agreement by Friday, April 9, 2020, Maxell will be left with no choice but to pursue litigation.”

After some discussion, Maxell’s counsel expressed interest in having another meeting and requested Amperex’s presentation materials in advance. Amperex’s counsel replied, “I will be in touch as soon as I can get the materials,” just two hours before filing a 90-page complaint seeking a declaratory judgment of noninfringement in the US District Court for the District of New Jersey. Two days later, Maxell filed an infringement action in the US District Court for the Western District of Texas. Maxell moved the New Jersey court to decline jurisdiction over the declaratory judgment action or transfer the action to the Western District of Texas. Amperex subsequently moved to enjoin Maxell’s action, and Maxell filed a motion to dismiss or transfer Amperex’s complaint, arguing that the action was brought in bad faith and in anticipation of Maxell’s actions.

Departing from the first-to-file rule, the district court granted Maxell’s transfer request. The district court acknowledged that a “first-filed action is preferred . . . unless considerations of judicial and litigant economy, and the just and effective disposition of disputes, require otherwise.” The district court then addressed several factors, including whether Amperex’s suit was anticipatory and the relative convenience of the forums. The district court concluded that Amperex’s suit was anticipatory because “when one party gives a deadline by which a dispute must be resolved non-judicially and the other party quickly files a declaratory action, the declaratory action is anticipatory.” Moreover, while neither bad faith nor ongoing negotiations are required for a suit to be anticipatory, bad faith actions that “disrupt the non-judicial settlement of disputes or . . . string the defendant along so that the plaintiff can win the race to the courthouse . . . weigh strongly in favor of transfer or dismissal.” Thus, the district court found that Maxell’s clear ultimatum coupled with Amperex’s “feigned cooperation” weighed heavily in Maxell’s favor.

The district court next noted that neither district was more convenient for the parties or witnesses, whereas Amperex’s failure to properly serve Maxell [...]

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Magazine Reload: Claim Construction Error Requires Reversal and Remand

by Amol Parikh | Jan 20, 2022 | Patents

The US Court of Appeals for the Federal Circuit reversed a district court’s summary judgment ruling based on a claim construction error because nothing in the claims or specification of the asserted patent supported the district court’s overly narrow interpretation of the disputed claim term. Evolusion Concepts, Inc. v. HOC Events, Inc. d/b/a Supertool USA, Case No. 21-1963 (Fed. Cir. Jan. 14, 2021) (Prost, Taranto, Chen, JJ.); Evolusion Concepts, Inc. v. Juggernaut Tactical, Inc., Case No. 21-1987 (Fed. Cir. Jan. 14, 2021) (Fed. Cir. Jan. 14, 2021) (Prost, Taranto, Chen, JJ.).

Evolusion owns a patent directed to a device and method for converting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. A detachable magazine allows a user to fire the weapon until the magazine is depleted, then release the magazine, insert a new magazine and resume firing. In contrast, a fixed magazine can be removed and replaced only by disassembling certain nonmagazine parts of the firearm, which slows the rate of fire. The specification states that firearms with detachable magazines are likely to face increased legal restrictions, noting that bills recently introduced in US Congress would have banned semi-automatic weapons with detachable magazines. The claims of the patents recite, among other limitations, a “magazine catch bar.”

Evolusion sued Juggernaut for infringement. Juggernaut asserted invalidity and noninfringement. The parties cross-moved for summary judgment relating to infringement of the device claims, agreeing that the question of infringement depended entirely on whether the claimed “magazine catch bar” included a factory-installed (OEM) magazine catch bar. The district court concluded that the term “magazine catch bar,” as used in the claims and specification, excluded an OEM magazine catch bar. The court’s conclusion was based primarily on the sentence in the specification that states: “The invention is a permanent fixture added to a semi-automatic firearm by removing the standard OEM magazine catch assembly and installing the invention.” The court reasoned that the “magazine catch bar” of the invention could not be an OEM magazine catch bar since the OEM magazine was one of the components removed to install the invention. Based on the construction, the court concluded that Juggernaut did not literally infringe the patent. The court also found that Juggernaut could not infringe under the doctrine of equivalence because Evolusion had dedicated a factory-installed magazine catch bar to the public by disclosing, but not claiming, this embodiment.

Evolusion also sued Supertool for infringement. When Supertool failed to respond to the complaint, the district court clerk entered a default under Rule 55(a) of the Federal Rules of Civil Procedure. With the requests for relief not yet adjudicated, Evolusion 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 Evolusion failed to state a viable claim for infringement against Supertool because its products also required reusing the factory-installed magazine catch bar. Evolusion appealed the Juggernaut and Supertool rulings.

The Federal Circuit reversed the noninfringement [...]

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