Taylor & Edelstein Success at the Federal Circuit: Schmeisser v. AC-Unity
While the attorneys at Taylor & Edelstein frequently work on acquiring patents and other IP, we also assist our clients protecting their IP. Protecting IP includes both supporting infringement actions in district courts as well as defending IP on appeal. One such recent appeal involves Taylor & Edelstein’s client, Schmeisser GmbH, in an enforcement action against AC-Unity D.O.O. involving magazines for firearms.
When acquiring patents, ensuring that claims can withstand litigation is just as vital as the initial invention process. Issues can arise when courts are led to believe that a patent's claims must provide a step-by-step manufacturing guide rather than a clear definition of the patent claims’ boundaries.
This critical distinction was recently spotlighted on appeal, where the U.S. Court of Appeals for the Federal Circuit reversed a decision that had invalidated a firearm cartridge housing patent based on indefiniteness. The original decision held that because the patent's distance-related terms did not explicitly detail the exact values needed to build a fully operational magazine housing from scratch, the claims were indefinite.
The Federal Circuit clarified that the original decision had fundamentally conflated the standard for definiteness with the requirements for enablement and written description. The appellate court emphasized that because the physical dimensions and tolerances in question were clearly illustrated in the patent figures and easily measurable using standard manufacturing tools, an average engineer or skilled artisan could readily determine whether a physical product infringes upon the patent. Whether that same engineer could use the claims alone to manufacture a perfect, functional product is an enablement issue, which must be analyzed separately from whether the claim language itself is clear. The Federal Circuit’s decision also highlighted that Taylor & Edelstein attorneys amended the claims during prosecution to address the examiner’s concerns about definiteness, further evidencing that the claims were definite.
Todd Taylor worked closely with Schmeisser during both the acquisition and enforcement of the patent-at-issue. Todd’s work has enabled Schmeisser to vigorously defend its IP against infringers.
Taylor & Edelstein is pleased that the Federal Circuit sided with Schmeisser on appeal and will continue working to protect Schmeisser’s IP.