Steyr Arms Inc v. Beretta USA Corp
2:15-cv-01718
N.D. Ala.Apr 19, 2018Background
- Steyr Arms sued Beretta USA for alleged infringement of U.S. Patent No. 6,260,301 (the ’301 Patent), which claims a pistol with a plastic housing and a removable multifunction metal part that carries trigger components and barrel-locking structure.
- The ’301 Patent issued with one claim after prosecution amendments that added specific structural details (transverse shaft holes, a projection/recess interaction, and control means for locking the barrel) to overcome rejections.
- The parties disputed construction of three claim limitations: (1) “means for supporting the trigger mechanism,” (2) “the multifunction metal part includes control means for locking said barrel in the barrel slide,” and (3) “housing has a rear wall which is provided with a recess for receiving a projection on the multifunction metal part.”
- The Court applied pre-AIA § 112 (¶ 6) principles for means-plus-function limitations and limited analysis to intrinsic evidence (claims, specification, prosecution history).
- For the two means-plus-function terms, the Court identified the claimed functions and limited the claims to the corresponding structures disclosed in the single embodiment of the specification (and equivalents).
- The Court found the third limitation plain and declined to construe it; it rejected Beretta’s attempt to read a “unitary, one-piece” limitation into the claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether “means for supporting the trigger mechanism” is a means-plus-function term and, if so, what structure corresponds | Steyr: term is means-plus-function but should be broadly read to cover the multifunction metal part with any desired holes/pins (not limited to the specific pins/hole numbers) | Beretta: limit to the specific structures in the spec (multifunction part plus the listed pins, holes, guide, etc.) | Court: term is means-plus-function; limited to the multifunction metal part and the specific pins (21,23,24,25), guide (27), holes (38–42) as disclosed in the single embodiment, and equivalents (exclude the trigger and other moving parts as structure) |
| Whether “the multifunction metal part includes control means for locking said barrel in the barrel slide” is means-plus-function and what structure corresponds | Steyr: control means is the second bridge that spans the side parts and interacts with barrel attachments; should not require additional elements | Beretta: must be limited to the multifunction part including side parts and multiple bridges (first, second, third) formed on the part | Court: term is means-plus-function; corresponding structure is the second bridge (33) that connects left/right side parts and engages the barrel control attachments to lock the barrel, and equivalents (first/third bridges not required) |
| Whether “housing has a rear wall which is provided with a recess for receiving a projection on the multifunction metal part” requires construction | Steyr: plain meaning; no construction necessary | Beretta: must be construed to require a recess receiving a projection from a unitary, one-piece multifunction metal part | Court: phrase is clear on its face; no construction required and the specification does not limit the multifunction part to a unitary one-piece construction |
| Whether Steyr’s late adjustments to proposed constructions should be rejected for procedural noncompliance | Beretta: Steyr improperly amended its construction after Joint Statement; court should adopt Beretta’s proposals | Steyr: parties reserved right to amend; court should consider updated briefs | Court: rejected Beretta’s procedural objection; considered Steyr’s amended proposals on the merits |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (claim terms given ordinary meaning; specification is primary guide for claim construction)
- O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., Ltd., 521 F.3d 1351 (Fed. Cir.) (claim construction is a matter of law; court must resolve fundamental disputes)
- Medical Instrumentation & Diagnostics Corp. v. Elektra AB, 344 F.3d 1205 (Fed. Cir.) (means-plus-function two-step: identify function then corresponding structure)
- Mettler-Toledo, Inc. v. B-Tek Scales, LLC, 671 F.3d 1291 (Fed. Cir.) (means-plus-function limited to structures disclosed in the specification and equivalents; single-embodiment disclosure limits scope)
- Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346 (Fed. Cir.) (items that are the object of a claimed function are not part of the structure performing the function)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.) (specification is usually dispositive guide to claim term meaning)
- Acromed Corp. v. Sofamor Danek Group, Inc., 253 F.3d 1371 (Fed. Cir.) (structural details from the embodiment need not be included if not necessary to perform the claimed function)