By Ben Langlotz | June 8, 2016 | Firearms | 0 Comments
As most of us were enjoying the elegance and convenience of the Kentucky Exposition Center at the NRA Annual Meeting in Louisville, Mossberg filed a lawsuit against 12 trigger makers on the first day of the show. No “We’ve got a problem” letters. No phone calls. Just “Bam! You’ve been sued.” It’s a hair-trigger legal strategy that raises the question of whether Mossberg figured they’d probably be sued in 12 different states by 12 accused trigger makers seeking to clear the cloud of a questionable patent, and would rather have one lawsuit in one convenient location.
I admit that sending a “you’re in trouble” lawyer letter right before a weekend can sometimes be a good strategy. Certain infringers might need a sleepless weekend to stew without being able to reach their lawyer so they’re ready to do the right thing on Monday when they finally get legal advice. If Mossberg had hoped to create similar anguish, they forgot that I’d be at the show, so my affected clients enjoyed instant in-person meetings to discuss the case.
Incidentally, while I’m close to this case (and have been for years) this report will focus on the public facts – plus plenty of my opinion and speculation). Patents are public, and there’s nothing that’s secret (at least that I know) that’s more interesting than what we can learn from the public record.
This is about US Patent 7293385, naming inventor Chip McCormick of Chip McCormick Custom (CMC), presumably associated with CMC Triggers, a recent vocal advocate of others paying Mossberg a royalty like they are. I’m not sure if they sold Mossberg the patent and licensed it back, or the exact connection between McCormick and today’s CMC Triggers (who are great folks I always enjoy seeing at the shows). Clearly, Mossberg is suffering in the PR real on the Internet, with their main response “fairness” that all should pay the same royalty. By the time I’m finished explaining, you might agree, except that all should perhaps pay the same royalty of zero.
In most cases, we’ll take a look at their patent’s claims, and at your product. We’ll have one of three reactions:
Good news. They don’t have a case because your product doesn’t have each and every elements of any of their claims.
Bad news. You are in trouble, because you clearly infringe one of their claims.
Uncertain. It’s a fuzzy, open question needing more research.
If it’s #1, I go back to the other lawyers and tell them why they should go away (they never go away if you don’t tell them why).
If it’s #2, I counsel you about how we can negotiate a phase out, or I might help you engineer a non-infringing solution.
If it’s #3 we do some more research, and look at the whole history of the patent for any weaknesses.
Sometimes the patent claims are so broad that there’s no doubt that everyone in the universe infringes them. When that happens, we don’t try to weasel around the claims, we try to KILL THE PATENT.
Sometimes, you can look at a patent (when you know how to read and interpret the claims – those numbered paragraphs at the end that define the legal scope of the invention) and you just know that there’s no way it could be valid. There must be some fatal flaw. The invention was obvious, even back when the patent was applied for.
In this case, I didn’t need to look at the patent when my clients at the NRA show told me they’d been sued. That’s because I’d already spend hundreds of hours analyzing it. And my reaction was something to the effect of: “Is that crappy patent still alive and kicking?” I’d assumed it had been given last rites long ago, and would never rear its ugly head again.
But before I show you what the patent is about, and why I think (know) it’s invalid and unenforceable, I’ll explain one important principle that you must understand if you are ever a patent applicant yourself:
You must reveal to the patent examiner all the closest “prior art” (preexisting technology) if you want your patent to be enforceable.
This is counterintuitive, because why would you want to give the examiner ammo to shoot down your own patent? The answer is that you want the examiner to have all the closest prior art so that we can prevail over it all, an end up with a challenge that has been immunized to many challenges.
No prizefighter ever won the title by knocking out dozens of patsies. He had to prove himself against the best. Your patent is the same. If you get an easy allowance because an examiner didn’t do a thorough search (or heaven forbid you knew about but didn’t disclose something pertinent) you might get your patent and feel like a winner, but when you go into the ring and try to enforce your patent, you’ll be up against a much tougher opponent.
The company you accuse will hire lawyers to dig up all the prior art they can to try to invalidate your patent. To avoid millions in liability or future royalties, they’ll invest tens of thousands of dollars in patent searches to find the “silver bullet” to kill your patent. They hope when you see the killer prior art they find (if they can find it), you’ll slink away, drop your suit, and keep your unenforceable patent as a useless plaque on the wall, instead of suffering the public humiliation of having it publicly invalidated by a court of law. My clients don’t invest in patents to get a plaque on the wall or to boost their egos. They’re looking for meaningful competitive tools that increase their profits and the value of their business. So I always urge my clients to tell me all about the closest, toughest prior art they know about, and we get it right in front of the examiner, often discussing it in the patent application itself, explaining why the invention is different and not just an obvious variation.
The key lesson is DISCLOSE EVERYTHING, and here’s the Mossberg story to illustrate it.
It’s tempting to look at the drawings in a patent and think you understand what it covers, but the key is in the claims. It’s tempting to read a patent and think that what it says is important is protected, but the claims are what count. Still, the drawings and description are helpful to understand the claims. In this case, I’ll paraphrase the claims (this is narrower in some ways for clarity):
“We claim a trigger group having a housing containing pivoting trigger parts. The parts pivot on sleeves that are attached to the housing. The sleeves have little holes that receive the original trigger pins that pass through the original holes in the sides of the lower receiver.”
Mossberg’s patent doesn’t cover modular trigger groups in general, it covers only the ones that use sleeves that have the dual function of supporting pivoting parts, and also providing the anchor point for the original pins. Got it? You see, interpreting patents isn’t that hard.
So, congratulations to Mr. McCormick for his invention, and for what presumably was a happy sale of the rights to Mossberg.
Now, a dozen companies are looking at this and saying: “Gee, that’s what we’re doing. How can we avoid paying a royalty to Mossberg?” The answer, when you can’t make a case that you don’t infringe, is to invalidate the patent.
You can invalidate a patent, if you can find the “silver bullet.” That would be some piece of prior art – it doesn’t have to be a patent, it can be any old publication. And by “old” I mean before the critical date when the threatening patent was filed. So, everyone in the trigger business is in a scramble to find anything that shows the idea of a trigger housing with sleeves, etc.
And after some experience with this case, I happened to remember that there was at least one trigger having a housing that used a sleeve to support a pivoting hammer, with a hole for the pin that secures it to the stock of the gun. That was US Patent 4671005 to Jewell. It’s not for an AR, it has only one “sleeve”, and the pin holds it not to a lower receiver, but to a traditional gunstock.
When I first saw the Jewell patent years ago in the context of an effort to invalidate the same Mossberg patent, I was thrilled. It was exactly the kind of “silver bullet” that every patent attorney dreams of finding (or dreads, if he’s on the other side). I was experienced enough to know killer prior art when I saw it, but naïve enough to think that the other side would go away quietly when I told them about it.
Look carefully at the drawings, and you’ll see a sleeve at upper right that receives pin 30, and on which the hammer pivots. Imagine being a patent examiner and seeing the Mossberg patent application, and knowing that this Jewell sleeve was well-known old technology. How impressed would you be with the Mossberg argument that somehow it’s not obvious to use have two of those sleeves, or to pin the housing to a metal lower instead of a wood stock?
One caution: it’s not enough simply to find prior art that might have been relevant to the case, and let the patent office reexamine the patent. For the prior art to invalidate the patent, it must be something truly different from what was already considered by the examiner. A different piece of evidence that shows the same concept that was shown in something else the examiner did consider won’t help. It must be something that shows the key concept, something that would have made a difference. By the way, when you look at a patent, it will have a list on the first page of all the patents and other references the examiner considered. Each one will lead to a view of what the examiner considered.
For the Mossberg patent, the Jewell patent was in fact critical because nothing the examiner looked at was even close. Nothing I looked at on the list on the front of the Mossberg patent showed that key concept of sleeves supporting pivoting parts and used to receive other pins.
I was convinced that the Mossberg patent would fall. And for a while I was wrong, as litigators spent a few years battling in the Patent Office over the matter. Recently, it’s been reported publicly that all the claims are “rejected” in a later reexamination proceeding. This means not that the case is over, but that Mossberg must battle the patent examiner and convince them that their drop in trigger with sleeves is not obvious compared to the Jewell trigger with its sleeve. Mossberg may try to argue that the key to their invention is that they have two sleeves instead of one. But they will face a bunch of other prior art that their adversaries have been uncovering, and I believe that it’s extremely unlikely that they will end up with any patent rights that will lead to significant royalties.
The 12 trigger defendants have not yet been “served” with the lawsuit. This is a window for negotiation, and there is a period before Mossberg must serve the papers on the 12 defendants. With the recent ruling that the patent is rejected in reexamination, Mossberg must be thinking that if they fully activate these lawsuits, the first thing all the defendants will do is to ask the judge to put the lawsuit on hold until the reexamination is resolved. I think they will almost certainly get their request, as judges don’t like to waste time on cases that will probably be resolved without a lawsuit.
All 12 defendants are in the same position. Even though they are mostly direct and fierce competitors with each other, they all can benefit from standing together against this patent, whether that is negotiating a royalty, or fighting the lawsuit. Lawsuits are expensive, but divided by 12 makes things a lot less painful.
By the way, given that the writing is on the wall for the Mossberg patent, my key advice to anyone signing an agreement to pay royalties to Mossberg is: 1. Don’t – let the current reexam ply out and invest in the lawsuit to get you to the point it is suspended by the judge. And: 2. If you must sign an agreement to pay royalties, be sure that your obligation ends if the patent is invalidated (maybe have a provision for a refund).
My readers know I don’t mind risking a little speculation, so here goes… I wonder if Mossberg failed in their due diligence in acquiring the patent rights. Caveat emptor – not all patents are valid. They might have paid millions, but evidently didn’t first invest the tens of thousands of dollars in a deep search to find the prior art that is likely to kill the patent. I remember buying my first used car as a young man – I was so excited that I didn’t dig as deeply as I should have, and I paid for my eagerness. Did Mossberg executives fail to do their homework on a big purchase? Is their current aggressive legal posture in the face of likely invalidation an exercise in denial? Is this about face-saving so they can blame the patent examiner instead of themselves? I have no idea.
Over the years, I’ve had many clients ask me to write up a royalty agreement because they want to use someone else’s patented technology. I tell them that first we need to look at the quality of that patent, and also analyze whether or not it even covers their product. Don’t pay for something if your competition won’t have to pay.
But in the end the most important lesson here for patent applicants is that if you want to strengthen your patent against challenges, you need to be sure to reveal everything you know about the closest prior art, so that the examiner can consider it, and your attorney can get a patent allowed in spite of it. Such a patent is far more likely to serve your objectives in investing it in: to make your business more profitable, valuable and secure.
PS: Any companies involved in this suit are welcome to contact me to discuss joining a common-interest coalition to address this matter.