Please E-mail suggested additions, comments and/or corrections to Kent@MoreLaw.Com.
Help support the publication of case reports on MoreLaw
ERIC LEMOINE, TTC PERFORMANCE
PRODUCTS, INC., DBA BLACK ACES TACTICAL, v. MOSSBERG CORPORATION, O.F. MOSSBERG &
Case Number: 2020-2140
Judge: Jimmie V. Reyna
Court: United States Court of Appeals
for the Federal Circuit
Washington, DC - Patent Infringement lawyer represented plaintiffs-appellants with appealing stipulated judgment of noninfringement claim.
U.S. Patent 8,756,846 (the ’846 Patent) discloses a
“shotgun magazine receiver assembly” that “relates generally to shotguns and, more particularly to a retrofit magazine receiver for use with a conventional shotgun” that
“allow[s] a user to rapidly fire and reload ammunition via
a removable ‘box’ style magazine.” ’846 Patent col. 1
ll. 6–8, 34–35.
The only disputes at issue on appeal relate to the preamble of claim 1, which is reproduced below:
A shotgun magazine receiver assembly for converting a conventional shotgun having a trigger assembly and barrel into a magazine loaded shotgun, said
receiver assembly comprising:
Id. col. 7 ll. 20–23.
On April 20, 2015, Appellants, Eric Lemoine and TTC
Performance Products, Inc. d/b/a Black Aces Tactical (collectively Lemoine), filed suit in the District of Connecticut
alleging that Appellees, Mossberg Corporation and OF
Mossberg & Sons, Inc.’s (collectively Mossberg), infringe
the ’846 Patent based on its alleged making, offering for
sale, and selling of its Model 590M box-style removable
magazine shotgun. J.A. 25. On June 16, 2020, the district
court issued a claim construction order determining that
(1) the preamble of claim 1 of the ’846 Patent is limiting,
(2) “conventional shotgun” means “a traditional shotgun
Case: 20-2140 Document: 26 Page: 2 Filed: 09/15/2021
LEMOINE v. MOSSBERG CORPORATION 3
that does not accept a removeable box magazine,” and (3)
“for converting a conventional shotgun” means “for retrofitting a conventional shotgun after original manufacture.”
J.A. 7–20. Because it is undisputed that Mossberg incorporates the box-style magazine of the Model 590M during
the original manufacture, the parties stipulated to a judgment of noninfringement of all claims of the ’846 Patent.
J.A. 2–5. On July 20, 2020, the district court entered its
final judgment, adopting the parties’ stipulation. J.A. 1.
Lemoine appeals, arguing that the district court erred
in its claim construction order. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(1).
STANDARD OF REVIEW
Claim construction is an issue of law that we review de
novo. Teva Pharm. USA, Inc. v. Sandoz, Inc., 574 U.S. 318,
325–26 (2015). We review the district court's underlying
factual findings for clear error. Id. at 322. “[W]hen the
district court reviews only evidence intrinsic to the patent
(the patent claims and specification, along with the patent’s prosecution history), the judge’s determination will
amount solely to a determination of law,” which we review
de novo. Id. at 331.
Lemoine contends that the district court erred by “inappropriately impos[ing] limitations on the ’846 Patent at
claim construction, rendering the ’846 toothless against
manufacturers who simply ‘convert’ existing models at the
manufacturing stage” as opposed to “after original manufacture.” Appellant’s Br. 3–4. More specifically, Lemoine
argues that the district court erred in construing the preamble phrase “for converting a conventional shotgun” to
mean “for retrofitting a shotgun after original manufacture.” Id. at 4, 23. Lemoine also requests that the case be
remanded with a requirement that “for converting a conventional shotgun” be construed to mean “regardless of
Case: 20-2140 Document: 26 Page: 3 Filed: 09/15/2021
4 LEMOINE v. MOSSBERG CORPORATION
whether the modification is made by a manufacturer in its
factory or by an owner of an existing conventional shotgun.” Id.
Mossberg responds that the district court’s construction of the preamble phrase “for converting a conventional
shotgun” represents the ordinary meaning of that phrase
in view the intrinsic and extrinsic evidence and should be
affirmed. Appellees’ Br. 12. Mossberg also contends that
Lemoine waived its right to challenge the district court’s
determination that the preamble of claim 1 is limiting by
failing to meaningfully raise that issue before the district
court or in its opening brief on appeal. Id. at 11–12.
First, as to whether claim 1 of the ’846 Patent is limiting, we agree with the district court and Mossberg that it
is not entirely clear that Lemoine ever actually pulled the
trigger in arguing that the preamble is not limiting. See,
e.g., J.A. 7 n.5. Nonetheless, we determine that it is.
The purpose of claim construction is to “determin[e] the
meaning and scope of the patent claims asserted to be infringed.” Markman v. Westview Instruments, Inc., 52 F.3d
967, 976 (Fed. Cir. 1995) (en banc), aff’d 517 U.S. 370,
(1996). If a preamble is limiting, it becomes part of the
claim. Eaton Corp. v. Rockwell Int'l Corp., 323 F.3d 1332,
1339 (Fed. Cir. 2003). Whether a preamble is limiting is
“determined on the facts of each case in light of the overall
form of the claim, and the invention as described in the
specification and illuminated in the prosecution history.”
Applied Materials, Inc. v. Advanced Semiconductor Materials Am., Inc., 98 F.3d 1563, 1572–73 (Fed. Cir. 1996).
Generally, the preamble does not limit the claims.
Georgetown Rail Equip. Co. v. Holland L.P., 867 F.3d 1229,
1236 (Fed. Cir. 2017). However, a preamble may be limiting if it recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim. Pitney
Bowes, Inc. v. Hewlett–Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999).
Case: 20-2140 Document: 26 Page: 4 Filed: 09/15/2021
LEMOINE v. MOSSBERG CORPORATION 5
Here, the district court correctly held that the preamble of claim 1 of the ’846 Patent is limiting because it provides important context for the nature and structure of the
invention being claimed, and that without the context provided by the preamble it is difficult to make sense of the
claims. J.A. 12–16. For example, the preamble introduces
the terms “shotgun magazine receiver assembly” and “conventional shotgun” and details the relationship between
those terms, namely that the claimed invention is a “shotgun magazine receiver assembly” for “converting a conventional shotgun.” Without this context, it is difficult to make
sense of the later disclosure of “mating,” “receiving,” or
“communicating” the claimed invention to or with components of a “conventional shotgun.”. Further, as discussed
in more detail below, the specification repeatedly discloses
that the claimed invention is a retrofit kit for existing conventional shotguns. See ’846 Patent col. 1 ll. 1–3; see also
id. col. 1 ll. 46–47. If the preamble was not limiting, these
disclosures would be rendered meaningless.
Having determined that the preamble of claim 1 of the
’846 Patent is limiting, we next set our sights on the proper
construction of the preamble phrase “for converting a conventional shotgun.” We determine that the district court
correctly construed this phrase to mean “for retrofitting a
conventional shotgun after original manufacture.”
A claim should be construed in a manner that is consistent with the patent's specification. Markman, 52 F.3d
at 979 (“Claims must be read in view of the specification, of
which they are a part.”). Typically, the specification is the
best guide for construing the claims. See, e.g., Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996) (“[T]he specification is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.”).
When the specification describes the features of the
“present invention” as a whole, this description limits the
Case: 20-2140 Document: 26 Page: 5 Filed: 09/15/2021
6 LEMOINE v. MOSSBERG CORPORATION
scope of the invention. Honeywell Int’l, Inc. v. ITT Indus.,
452 F.3d 1312, 1318–19 (Fed. Cir. 2006). Here, the specification quite clearly characterizes the present invention as
a “retrofit” conversion kit for use with an “existing” conventional shotgun. ’846 Patent col. 1 ll. 1–3 (“The present invention relates generally to shotguns and, more
particularly to a retrofit magazine receiver for use with a
conventional shotgun.”) (emphasis added); see also id. col.
1 ll. 46–47 (“[T]he present invention is designed to be incorporated into existing shotguns.”) (emphasis added).
The specification also discloses that the invention allows a “shotgun owner,” not a manufacturer, to “upgrade”
the receiver assembly of an existing conventional shotgun.
See id. col. 1 ll. 35–41 (“[M]any shotgun owners often
choose to upgrade their existing weapons with new stocks
and barrels as opposed to purchasing a new weapon. Accordingly, it would be beneficial to provide a shotgun magazine receiver assembly which can replace the stock
receiver of an existing shotgun to allow a user to rapidly
fire and reload ammunition via a removable ‘box’ style
Lemoine argues that these disclosures are merely exemplary and should not be read as limiting. In support,
Lemoine points to common broadening language in the
specification which states, for example, that:
detailed embodiments of the present invention are
disclosed herein; however, it is to be understood
that the disclosed embodiments are merely exemplary of the invention which can be embodied in
Id. col. 2 ll. 44–47. But as the district court correctly
noted, the specification makes clear that this language is
meant to ensure that the invention is broad enough to be
used with different types and models of shotguns, not in
different phases of production. See, e.g., id. col. 2 l. 64–col.
3 l. 9 (“As described herein, the term ‘shotgun’ can refer to
Case: 20-2140 Document: 26 Page: 6 Filed: 09/15/2021
LEMOINE v. MOSSBERG CORPORATION 7
virtually any type and manufacturer of semi-automatic
and/or shotguns. . . . Although illustrated in use with a
MOSSBERG 500 shotgun, it is to be distinctly understood
that the present invention has broader applications, and is
equally applicable for use on many other shotguns without
undue experimentation and without departing from the invention claimed.”). Moreover, neither the specification nor
the claims include a single reference to the use of the
claimed invention to manufacture a newly designed, or redesigned, shotgun with a box-style magazine.
In light of these disclosures, we determine that the district court correctly held that a person of ordinary skill in
the art, having read the claims in light of the specification
and intrinsic record, would understand that within the
meaning of the claims, “for converting a conventional shotgun” means “for retrofitting a conventional shotgun after
Outcome: We conclude that the district court’s determination
that the preamble of claim 1 of the ’846 Patent is limiting
was on target, and that it correctly construed the preamble
phrase “for converting a conventional shotgun,” to mean
“for retrofitting a conventional shotgun after original manufacture.” Accordingly, we affirm.