Docket No. 2011-1002, -1003
PROST, MAYER, O’MALLEY
October 6, 2011
Brief summary: Atlantic unsuccessfully argued that its patent described the alleged infringing device, but successfully argued in the alternative that the design was its trade secret.
Summary: Atlantic appealed the DC grant of SJ that its RE 39,465 patent relating to “free floating” handguards that attach to rifles was invalid for lack of written description and best mode (not considered in this opinion). Troy cross-appealed the DC’s denial of its Motion for JMOL regarding misappropriation of trade secrets, Motion for a Mistrial, and Motion for Remittitur. Mr. Troy previously worked for Atlantic and ultimately developed and patented his own handguard “that attached solely to the barrel nut of the gun”. Atlantic sued Mr. Troy for both patent infringement and trade secret misappropriation (note the potential conflict between the two arguments). However, the DC had construed the claims of Atlantic’s patent to cover Troy’s handguard but also found the patent invalid for failing to describe it. The FC found no error in the conclustion that the claims covered Troy’s product (“[t]o construe the claims otherwise would ignore the plain meaning of the ‘words of the claims themselves'” (Phillips, FC 2005); “substantive differences” between claims “can be a ‘useful guide in understanding the meaning of particular claim terms” (Arlington Indus., FC 2011)). And it agreed with the conclusion that Atlantic’s specification did not describe the device because, in part, at oral argument in front of the FC Atlantic’s counsel “agree[d] wholly with the [DC] conclusion that the specification does not disclose supporting the handguard . . . completely with a barrel nut” (Atlantic “used the reissue process to impermissibly obtain claims unsupported by the written description” (ICE Med., FC 2009)). It also found that Atlantic had developed the disputed handguard design but kept it as a trade secret when it filed the patent application. So, even though Atlantic lost on the infringement claim, it successfully alleged trade secret appropriation in the alternative. However, the FC also reversed the DC denial of Troy’s Motion for a Mistrial based on juror misconduct. And the panel did not address the best mode issue or Troy’s Motion for Remittitur.