Sure as Shootin’, If It’s Claimed in Your Patent, You Can’t Assert It as a Trade Secret

By Joel Leeman, a member of our Litigation Practice Group

Companies face a potential loss of intellectual property rights when a key employee walks out the door. Those rights may be grounded in both patents and trade secrets, which may pose tricky problems when those rights are intertwined, as a recent case illustrates.

In Atlantic Research Marketing Systems Inc. v. Troy, the Federal Circuit sets its sights on a rifle handguard that attaches to the gun barrel in only one place. Atlantic Research had employed Stephen Troy to assist it in making and marketing this product. When Mr. Troy left to make a competing product, Atlantic Research sued him for infringing its patent and for stealing and using its trade secrets.

The free-floating handguards sold by both parties solve the problem of how to attach ancillary devices, like integrated laser systems, to the barrel of a military rifle without damaging both the rifle and the added device. Ordinarily, the device could cause the barrel to bend; at the same time, the extreme heat from the barrel could damage the device. Both parties overcome these difficulties with a handguard that surrounds the barrel of the firearm without touching it.

The specification of Atlantic Research’s patent discloses a sleeve accessory, which includes a receiver-sleeve component that attaches to the firearm. Although the receiver sleeve is self-supported, the patent specification explained that “additional support may be provided” by a yoke around the barrel nut of the weapon.

Troy, for his part, offered for sale a handguard that could be attached to a rifle in just one location, the barrel nut.

Laying the groundwork for its infringement case, Atlantic Research asked the district court judge for a construction of the key claim of its patent that permitted the barrel nut to provide complete support for the handguard accessory. The receiver sleeve, Atlantic urged, provided additional but not necessary support. In short, Atlantic Research sought to have the claim construed in a manner that would be infringed by Troy’s barrel nut-only support design.

The district court (Judge Saris of the federal court in Boston) obligingly adopted the claim construction that Atlantic Research proposed, but found that the specification of Atlantic’s patent did not disclose a handguard attached only to the barrel nut. To the contrary, every embodiment in the patent had the handguard supported at no fewer than two points on the rifle.

The district court found the asserted patent claim invalid for lack of written description. The patent is supposed to permit a person who is skilled in the art to understand, upon reading the original specification, that the inventor was in possession of the claimed invention.

By the same token, as the Federal Circuit reminds us, “the purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.”

For Atlantic Research, getting the claim construction it wanted ultimately led to the invalidation of its claims because they were not supported by the specification. [Read the full article]