Declare Building and Due Course of: Analyzing NST World v. Sig Sauer Inc. within the Supreme Court docket

by Dennis Crouch

NST Global, LLC, dba SB Tactical v. Sig Sauer Inc. (Supreme Court 2023)

This case has a low likelihood of being granted certiorari, however it nonetheless has some fascinating parts relating to declare development and process.  This can be a excellent case for the Supreme Court docket to situation a GVR (Grant-Vacate-Remand) with an order to the Federal Circuit to clarify its reasoning.

The setup is frequent. Tactical sued Sig Sauer for patent infringement; Sig Sauer responded with an IPR petition that was ultimately profitable.  Tactical appealed primarily based upon the PTAB’s sua sponte declare development that discovered the preamble to be limiting, however the Federal Circuit Affirmed with out opinion.

The Supreme Court docket petition asks three questions:

1. Whether or not the declare development discovering the preamble limiting was improper.
2. Whether or not the PTAB violated due course of by construing the time period sua sponte and failing to present the patentee with discover or a chance to current proof.
3. Whether or not the Federal Circuit’s use of Rule 36 violates constitutional ensures  of due course of and the statutory protections of 35 U.S.C. 144.

The Tactical patents cowl a forearm stabilizing brace that may be hooked up to a pistol. U.S. Patent Numbers 8,869,444 and 9,354,021. Sig Sauer initially was a distributor of Tactical’s product, however later started making its personal competing product. At that time Tactical sued.

Within the IPR petition, Sig Sauer didn’t request any declare development. Likewise, the petition determination granting the IPR acknowledged that no declare phrases wanted any specific development.  “We agree—we want not expressly construe any declare time period
to resolve the events’ dispute.”  Throughout briefing, neither get together requested development of any facet of the declare preambles.  Finally although, in its ultimate written determination, the PTAB interpreted the preambles as limiting after which used that development to conclude that the claims had been invalid as apparent.

Sure, I stated that the slim development led to the claims being discovered invalid.  That’s uncommon — normally the addition of limitations helps to keep away from the prior artwork. On this case although the main target was on goal indicia of non-obviousness. NST’s gross sales; copying by Sig; reward; and so on.  However, by giving weight to the preamble phrases, the PTAB was in a position to destroy the presumed nexus between the claims and NST’s product.  The consequence, these secondary indicia had been discovered wanting as a result of NST had not offered extra proof “commensurate with the claims” as newly construed.

For context, the claims are directed to the attachment, however the preamble recites “a handgun” and “a assist construction extending rearwardly from the rear of the handgun:”

1. A forearm-gripping stabilizing attachment for a handgun, the handgun having a assist construction extending rearwardly from the rear finish of the handgun, the forearm-gripping stabilizing attachment, comprising: . . .

The PTAB dominated that the claims require the handgun and in addition the assist construction  as recited within the preamble together with the forearm attachment described within the physique.  The issue for the patentee is that its goal indicia proof targeted on the forearm attachment, not the entire bundle.  Thus, no nexus and no weight given to these secondary components.  In its determination, the PTAB when by means of the entire life and that means evaluation: “we conclude that the preambles of claims 1, 3, and 5 are ‘crucial to present life, that means, and vitality to the declare[s],’ and, as such, are limiting.”

The case was already shut as a result of there’s a lengthy historical past of this kind of stabilizer going again to the nineteenth Century, and so the absence of secondary concerns led to the obviousness conclusion.

Throughout the IPR trial, Sig Sauer had argued that the excessive gross sales had been because of an odd regulatory scheme in opposition to semi-automatic rifles, and the pistol attachment was truly common primarily as a result of it allowed the pistol to be shouldered.  On enchantment, that was raised as a substitute justification for the judgment. However, for my part, the PTAB didn’t truly rule on that situation within the first place.

The patentee appealed, however the Federal Circuit panel of Judges Reyna, Schall, and Chen affirmed with out opinion.