NST Global, LLC

Patent Trials and Appeals Board

Jun 22, 2021

IPR2020-00423 (P.T.A.B. Jun. 22, 2021)

Trials@uspto.gov Paper 49
571-272-7822 Date: June 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

SIG SAUER INC.,
Petitioner,
v.
NST GLOBAL, LLC,
Patent Owner.

IPR2020-00423
Patent 8,869,444 B2

Before PATRICK R. SCANLON, JAMES J. MAYBERRY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MAYBERRY, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining Some Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. INTRODUCTION
A. Background and Summary
SIG SAUER Inc. (“Petitioner”), filed a Petition (“Pet.”) requesting
inter partes review of claims 1–14 (the “Challenged Claims”) of U.S. Patent
No. 8,869,444 B2 (Ex. 1001, the “’444 patent”). Paper 1. We instituted trial
on all Challenged Claims and grounds. Paper 10.
NST Global, LLC (“Patent Owner”) filed a Patent Owner Response.
Paper 20. Patent Owner filed a motion to correct certain typographical
errors in its Patent Owner Response. Paper 46; see Paper 24 (authorizing the
motion). We granted Patent Owner’s unopposed motion. Paper 48. In this
Final Written Decision, we cite to Paper 46, Exhibit A as the Patent Owner
Response (“PO Resp.”).1
Petitioner filed a Reply to the Patent Owner Response. Paper 28
(“Reply”). Patent Owner filed a Sur-reply to the Reply. Paper 30 (Sur-
reply”).
Petitioner filed motions to exclude evidence. Papers 36, 37. Patent
Owner opposed these motions. Papers 39, 40. Petitioner replied to these
oppositions. Papers 41, 42.
We conducted an oral hearing on March 25, 2021, and the record
includes a copy of the transcript of that hearing. Paper 47 (“Tr.”).
The Board has jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
For the reasons that follow, we conclude that Petitioner demonstrates, by a

1 Paper 20 and Exhibit A of Paper 46 differ in their references to certain
exhibits. Exhibit A of Paper 46 corrects references to Exhibit 2007 in
Paper 20 to Exhibit 2009, and corrects references to Exhibit 2008 in
Paper 20 to Exhibit 2011.
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preponderance of the evidence, that claims 1, 3–6, 8–10, 13, and 14 are
unpatentable. We conclude that Petitioner fails to demonstrate, by a
preponderance of the evidence, that claims 2, 7, 11, and 12 are unpatentable.
B. Real Parties in Interest
Petitioner identifies itself, “its parent company SIG SAUER US
Holding LP, and that company’s parent companies, L&O Finance GmbH
and SIG SAUER Management LLC” as real parties in interest. Pet. 28.
Patent Owner identifies itself as the sole real party in interest. Paper 6, 1.
C. Related Matters
Petitioner identifies NST Global, LLC v. Ewer Enterprises LLC, No.
8:15-cv-00935 (M.D. Fla.), NST Global, LLC v. SIG SAUER Inc., No. 1:19-
cv-00121 (D. Del.), and NST Global, LLC v. SIG SAUER Inc., No. 1:19-cv-
00792 (D. N.H.), as matters related to the ’444 patent. Pet. 28. Petitioner
also identifies an inter partes review petition challenging U.S. Patent
No. 9,354,021 B2 (the “’021 patent”), a patent related to the ’444 patent.2
Id. at 29.
Patent Owner identifies civil action No. 1:19-cv-00792 and the inter
partes review challenging the ’021 patent as the only related matters.
Paper 6, 1.
D. The ’444 Patent
The ’444 patent, titled “Forearm-Gripping Stabilizing Attachment for
a Handgun,” issued October 28, 2014, from an application filed February 25,
2013, and claims priority to a provisional application, filed November 27,
2012. Ex. 1001, codes (54), (45), (22), (60), 1:7–9. The ’444 patent is

2 This proceeding is IPR2020-00424. We issue a Final Written Decision in
IPR2020-00424 concurrent with our Final Written Decision in this
proceeding.
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directed to “a forearm-gripping stabilizing attachment for a handgun that
secures to a rearward end of the handgun frame and engages a user’s
forearm.” Id. at 1:14–17. We reproduce Figures 1 and 2 from the
’444 patent below.

Figure 1 depicts “a side elevation view of the forearm-gripping
stabilizing attachment for a handgun . . . , illustrating the stabilizing
attachment in use and attached to a handgun.” Ex. 1001, 2:46–50. Figure 2
depicts “a partial rear elevation view of the forearm gripping stabilizing
attachment for a handgun of F[igure] 1.” Id. at 2:51–52. Stabilizing
attachment 10 includes unitary body 14 having upper body portion 20 and
lower body portion 22. Id. at 3:32–40.
Upper body portion 20 includes passage 24 that, in the embodiment of
Figure 1, extends completely through upper body portion 20. Ex. 1001,
3:46–48; cf. id. at Fig. 4 (depicting passage 24 not extending completely
through upper body portion 20). “Passage 24 provides for the telescopic
insertion of a portion of . . . handgun 12 therein to secure or mount the
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stabilizing attachment 10 to the handgun.” Id. at 3:48–51. Passage 24 may
retain buffer tube 263 by friction. Id. at 3:62–65.
Lower body portion 22 includes opposed flaps 28, 30. Ex. 1001,
3:66–67. The flaps are spaced to form gap 32, which receives a user’s
forearm 34. Id. at 4:1–4. “Flaps 28 and 30, being of the semi-rigid
elastomeric material, conform to the user’s forearm 34.” Id. at 4:4–6.
Strap 36 encircles flaps 28, 30 and the user’s forearm to secure
stabilizing attachment 10 to the user. Ex. 1001, 4:10–12. The strap of
Figure 1 encircles the flaps but not passage 24. Id. at 4:15–17, Figs. 1, 2.
Other embodiments describe other strap configurations, including
configurations that encircle the flaps and passage 24. See, e.g., id. at Figs. 5,
6 (depicting strap 36 encircling flaps 28, 30 and passage 24).
E. Illustrative Claims
Of the Challenged Claims, claims 1, 6, and 10 are independent claims.
Ex. 1001, 5:66–6:16, 6:29–46, 6:54–7:3. Claim 1, reproduced below, is
representative.
1. A forearm-gripping stabilizing attachment for a handgun,
the handgun having a support structure extending rearwardly
from the rear end of the handgun, the forearm-gripping
stabilizing attachment, comprising:
a body having a front end, a rear end, an upper portion, a
lower portion, and a passage longitudinally extending within said
upper portion and at least through said front end of said body, the
support structure of the handgun being telescopically receivable
by said passage;

3 The ’444 patent also associates reference numeral “16” with the buffer
tube. See Ex. 1001, 3:62–65. We understand from the figures and
description that item “16” is the forward end of body 14 and item “26” is the
buffer tube. See id. at 3:35–36, 3:51–53, Fig. 1.
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said lower portion being bifurcated so as to define a pair
of spaced flaps between which a user’s forearm is received when
securing the stabilizing attachment to the user’s forearm; and
a strap connected to said body, said strap securing said
spaced flaps to retain the user’s forearm between said spaced
flaps when the stabilizing attachment is secured to a user’s
forearm.
Id. at 5:66–6:16. Claim 6 differs from claim 1 in that it recites a support
structure in the body of the claim. Id. at 6:29–46. Claim 10 recites similar
subject matter as claim 1. Id. at 6:54–7:3.
Claims 2 and 11 require the spaced flaps to be “constructed of an
elastomeric material.” Ex. 1001, 6:16–20, 7:4–6. Claim 7 requires the
support structure to be “a buffer tube.” Id. at 6:46–47.
F. Prior Art and Asserted Grounds
Petitioner asserts that the Challenged Claims are unpatentable based
on four grounds:
Claims Challenged 35 U.S.C. § References/Basis
1–14 103(a) Forjot4
1–14 103(a) Forjot, Morgan5
1–14 103(a) Forjot, Baricos6
1–14 103(a) Forjot, Deckard7
Petitioner relies on the declaration testimony of Mr. John Nixon.
Exs. 1002, 1022. Patent Owner relies on testimony from Dr. Joshua
Harrison. Exs. 2001, 2009.

4 Forjot, FR 899,565, published June 5, 1945 (Ex. 1008, “Forjot”). Exhibit
1008 is a certified English translation of Exhibit 1007. See Ex. 1008, 1.
5 Morgan, US 6,016,620, issued January 25, 2000 (Ex. 1010, “Morgan”).
6 Baricos, et al., US 5,852,253, issued December 22, 1998 (Ex. 1009,
“Baricos”).
7 Deckard, US 3,793,759, issued February 26, 1974 (Ex. 1011, “Deckard”).
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The following subsections provide a brief description of the asserted
prior art references.
1. Forjot
Forjot, titled “Cuff and stabilizing plate to improve the use and firing
of underwater weapons,” published June 5, 1945 from a grant on August 28,
1944. Ex. 1008, 1.8 We reproduce Forjot’s Figures 1 and 2, below.

Figure 1 (a portion of which is reproduced above), depicts “the
respective positions of the cuff [and] the stabilization plate on an underwater
pistol or rifle.” Ex. 1008, 1:45–47. Figure 2 depicts “a front view of the
cuff.” Id. at 1:48. Cuff 1, “preferably made of stainless steel and of a
suitable thickness to obtain a certain elasticity . . . is intended to make [a]
weapon integral with the arm” of a user. Id. at 2:3–6.
Cuff 1 is attached to butt 5 of the gun through tube 2 and joint 6.
Ex. 1008, 2:6–11. Screw 3 is used to tighten cuff 1 to tube 2 and to adjust
opening 4. Id. at 2:6–9.

8 We refer to the page number of the patent disclosure of Exhibit 1008
(which has two pages of disclosure and three pages of drawings) when
referencing Forjot. Page 1 of the patent appears on page 2 of Exhibit 1008,
with page 1 being the translator’s declaration. When appropriate, we also
include the line numbers in our citation, in the form page: lines.
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2. Morgan
Morgan, titled “Arm and Hand Gun Support Apparatus,” issued
January 25, 2000. Ex. 1010, codes (54), (45). Morgan is directed to “a
support that is mounted onto the arm to steady the aim of a hand gun user.”
Id. at 1:9–10. We reproduce Morgan’s Figures 1, 7, and 8, below.

Figure 1 depicts “a perspective illustration of the preferred
embodiment of [Morgan’s] arm and hand gun support apparatus.” Ex. 1010,
3:52–53. Figures 7 and 8 depict “a frontal view of the wrist support” and “a
frontal view of the forearm support,” respectively. Id. at 4:1–2. Wrist
support 136 and forearm support 138 are made of a rigid plastic. Id. at 5:51–
53. Each support includes a pair of straps 142, with one end of the strap
(end 146) attached to the support and the other end (end 144) having fastener
152. Id. at 5:53–58.
3. Baricos
Baricos, titled “Personal Firearm System,” issued December 22, 1998.
Ex. 1009, codes (54), (45). We reproduce Baricos’s Figures 1 and 2, below.
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Figure 1 depicts “a diagrammatic perspective view of a firearm
system in accordance with [Baricos’s] invention carried beneath the forearm
of a user,” and Figure 2 depicts “a diagrammatic longitudinal axial section
view of a firearm system.” Ex. 1009, 1:54–58. Relevant to our analysis,
Baricos’s firearm system includes forearm or elbow cradle 230 having strap
232. Id. at 2:36–37, 2:47–49. “[S]trap 232 [is] designed to surround the
user’s forearm, in front of the elbow, as can be seen in F[igure] 1.” Id. at
2:48–49.
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4. Deckard
Deckard, titled “Concealed Pistol Mounting,” issued February 26,
1974. Ex. 1011, codes (54), (45). We reproduce Deckard’s Figures 1 and 4,
below.

Figure 1 depicts “a front view of [Deckard’s] device in the released
mode.” Ex. 1011, 1:45–46. Figure 4 depicts a “cross-section of the device
taken at line 4—4 of F[igure] 1.” Relevant to our analysis, mounting unit 10
includes straps 13, 14, which fasten mounting unit 10 to forearm 26, by
encircling the user’s arm. Id. at 1:61–62.

II. ANALYSIS
A. Level of Ordinary Skill in the Art
The level of skill in the art is “a prism or lens” through which we view
the prior art and the claimed invention. Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001). Petitioner contends that a person having
ordinary skill in the art at the time of the invention “would typically have a
bachelor’s degree in mechanical engineering and 2-3 years of experience in
handgun use, procurement, repair, design, or manufacturing.” Pet. 10–11
(referencing Ex. 1002 ¶ 37). Patent Owner contends that the level of
ordinary skill in the art pertaining to the ’444 patent
is that of a designer or experienced user of modern firearms
accessories. The requisite knowledge and experience could be
obtained through completion of a bachelor’s degree in an
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engineering field, followed by some relevant experience
designing or using accessories for modern firearms, for example.
Alternatively, the same or an equivalent level of skill in the art
could be obtained by nonprofessional firearms owners, users, or
collectors who have substantial experience configuring and
shooting modern firearms and related accessories, even without
the benefit of any college education.
PO Resp. 2 (referencing Ex. 2009 ¶ 11).
We understand Patent Owner to contend that the level of
ordinary skill may be obtained through an engineering degree and
some experience in designing or using firearm accessories and that
same level of skill could, alternatively, be achieved through additional
experience without having a degree.
On the complete trial record, we find that the level of ordinary skill in
the art of the ’444 patent is a bachelor’s degree in mechanical (or similar
type of) engineering and 2 to 3 years of experience in handgun use,
procurement, repair, design, or manufacturing, and that an equivalent level
of skill may be obtained with additional experience without an engineering
degree. This definition is consistent with the prior art of record and the skill
reflected in the Specification of the ’444 patent. See, e.g., Ex. 1001, 4:19–22
(indicating that a person having ordinary skill in the art would appreciate the
function of a securement strap and how the strap may be arranged); 5:36–40
(indicating that a person having ordinary skill in the art would appreciate
mounting brackets to mount a support structure); Ex. 1010, 6:9–16
(indicating that a person having ordinary skill in the art would understand
how to optimize the size, materials, dimensions, and form of Morgan’s hand
gun support).
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We note that our findings and conclusions in this Final Written
Decision would be the same if we applied either Petitioner’s or Patent
Owner’s definition of the level of ordinary skill.
B. Claim Construction
In inter partes reviews, we interpret a claim “using the same claim
construction standard that would be used to construe the claim in a civil
action under 35 U.S.C. 282(b).” 37 C.F.R. § 42.100(b) (2019). Under this
standard, we construe the claim “in accordance with the ordinary and
customary meaning of such claim as understood by one of ordinary skill in
the art and the prosecution history pertaining to the patent.” Id.
We determine that we must address two claim terms to resolve certain
of the parties’ disputes—“buffer tube” and “elastomeric material.” See
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013,
1017 (Fed. Cir. 2017). We also address whether the preambles of
independent claims 1, 6, and 10 are limiting.
1. “buffer tube”
Claim 7 depends directly from independent claim 6 and recites
“wherein said support structure is a buffer tube.” Ex. 1001, 6:46–47. Patent
Owner contends that the term “buffer tube” is a term of art, and “is well
known to refer specifically to a cylindrical lower receiver extension that
houses the buffer assembly (sliding buffer and action spring components) of
a firearm.” PO Resp. 6 (referencing Ex. 2009 ¶ 42).
Patent Owner argues that Exhibit 2010, a U.S. Army technical
manual, uses the term “buffer” consistent with Patent Owner’s construction.
PO Resp. 6 (referencing Ex. 2010, 25, 95–98, 196–197, 200; Ex. 2009 ¶ 43).
Patent Owner adds that Petitioner’s declarant, Mr. Nixon, uses the term
“buffer tube” consistent with the proposed construction as well. PO Resp. 6
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(referencing Ex. 1002 ¶ 4). Patent Owner also directs us to deposition
testimony of Mr. Nixon that is consistent with Patent Owner’s construction.
Id. at 6–7 (referencing Ex. 2011, 12:15–13:6, 16:17, 17:11–21; Ex. 2010, 25,
95–98, 196–197, 200; Ex. 2009 ¶ 45).
Patent Owner explains that “the purpose of the buffer assembly in a
firearm is to store (and partially damp) recoil energy from the backwards
motion of the bolt carrier group when the gun is fired, and then to use the
stored energy to return the bolt into battery while chambering the next
round.” PO Resp. 7 (referencing Ex. 2009 ¶ 47). Patent Owner adds that:
The mass of the buffer and the stiffness of the action spring
controls the timing of the return motion of the bolt carrier group,
and therefore also affects the proper operation of the firearm. No
tube that is unrelated to the foregoing bolt return function can be
properly understood to be a “buffer tube.”
Id. (referencing Ex. 2009 ¶ 47).
Petitioner argues that the intrinsic record does not support Patent
Owner’s proposed construction; instead, Patent Owner’s construction relies
solely on extrinsic evidence. Reply 3. Petitioner argues that the only
disclosure in the intrinsic record is that of “cylindrical extension 26.” Id.
Petitioner argues that, based on this intrinsic evidence, the proper
construction of the term “buffer tube” is “a cylindrical lower receiver
extension from the rear of the handgun that provides support for the
stabilizing attachment.” Id. at 4.
Patent Owner replies that Petitioner’s proposed construction
eliminates the word “buffer” from the term. Sur-reply 2, 18. Patent Owner
argues that Petitioner’s construction departs from how a person having
ordinary skill in the art would understand the term “buffer tube.” Id.
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In addition, Patent Owner argues that Petitioner “incorrectly described
element 26 in Figures 1, 2, and 7 as a ‘cylindrical extension,’” which “is
defined in the Specification as a ‘buffer tube.’” Sur-reply 2–3 (referencing
Ex. 1001, 3:52–57, 4:46, 5:15). Patent Owner argues that a “cylindrical
extension” as used by Petitioner is more analogous to tubular member 62,
which is a support structure other than a buffer tube. Id. at 3.
Patent Owner explains that the internal structure of a buffer tube is not
described in the Specification of the ’444 patent as the internal structure is
implied by using the term “buffer tube.” Sur-reply 3. Patent Owner adds
that Petitioner’s declarant testified that buffer tubes are distinct from other
tubular members. Id. (referencing Ex. 2011, 16:15–17:23).
We conclude, on the complete record, that Patent Owner has the better
position. We turn first to the intrinsic record. In construing the term, we
start with the language of the claims. See, e.g., Phillips v. AWH Corp., 415
F.3d 1303, 1314 (Fed. Cir. 2005) (en banc) (“[T]he context in which a term
is used in the [claim at issue] can be highly instructive.”). Claim 7 requires
that the “support structure” recited in claim 6 be “a buffer tube.” Ex. 1001,
6:46–47 (emphasis added). That is, the support structure of claim 6 is more
than a tube; it is a specific type of tube—a buffer tube.
The language of other claims can also inform a construction. See
Phillips, 415 F.3d at 1314 (“Other claims of the patent in question . . . can
also be valuable sources of enlightenment as to the meaning of a claim
term.”). Claim 8 depends from claim 6 and requires that the “support
structure” recited in claim 6 be “other than a buffer tube.” Ex. 1001, 6:49–
50. This language at least makes clear that a buffer tube is a unique type of
support structure.
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“[T]he specification ‘is always highly relevant to the claim
construction analysis.’” Phillips, 415 F.3d at 1315. As Petitioner notes, the
Specification does not describe what is meant by the term “buffer tube.”
Reply 3–4. The Specification does characterize a buffer tube as a support
structure that is present on a certain type of handgun. See, e.g., Ex. 1001,
5:14–20 (“[H]andgun 12 includes an integral buffer tube 26 that provides a
suitable support upon which the stabilizing brace 10 may be attached . . . .
But not every handgun is provided with a suitable tubular support or similar
structure that rearwardly extends from the handgun to which the stabilizing
brace 10 may be attached.”). The Specification explains that for handguns
without buffer tubes, a tubular member may be attached to the handgun
using a bracket. Id. at 5:21–29. This characterization suggests a distinction
between a buffer tube and other cylindrical lower receivers that extend from
the rear of a handgun and provide support for a stabilizing attachment.
We are not directed to anything in the prosecution history that sheds
additional light on the meaning of “buffer tube.”
We now turn to the extrinsic evidence. Although extrinsic evidence,
when available, may be useful when construing claim terms under our claim
construction standard, extrinsic evidence should be considered in the context
of the intrinsic evidence. Phillips, 415 F.3d at 1317. Still, “[t]he Board may
properly rely on expert testimony ‘to explain terms of art.’” Bradium Techs.
LLC v. Iancu, 923 F.3d 1032, 1043 (Fed. Cir. 2019).
Dr. Harrison, Patent Owner’s declarant, testifies that “[t]he term
‘buffer tube’ is well known to refer specifically to a cylindrical lower
receiver extension that houses the buffer assembly . . . of a firearm.”
Ex. 2009 ¶ 42. Dr. Harrison bases this testimony on his experience and the
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use of the term “buffer” in a 1996 U.S. Army technical manual. Id. at ¶ 43
(referencing Ex. 2010, 25, 95–98, 196–197, 200).9
In his direct testimony, Mr. Nixon declares, although not in the
context of claim construction, that “[t]he ’444 [p]atent is clearly aimed at the
AR15 ‘pistol’ market, the front page illustration, and Figure 1, showing a
generic AR15 with characteristic buffer tube at the rear. Figure 7 illustrates
an AK47 type firearm with an AR15 style buffer tube attached to the rear to
enable mounting of the claimed invention.” Ex. 1002 ¶ 4 (emphasis added);
cf. Ex. 1022 (providing a supplemental declaration by Mr. Nixon in response
to certain of Patent Owner’s positions, but not addressing the construction of
“buffer tube”). Mr. Nixon also testifies about buffer tubes in his deposition.
For example, he states that the buffer tube of an AR15 “contains a spring
and when you use the rifle the spring is compressed when the bolt moves
backward and then the spring pushes the cartridge forward from the
magazine and reloads the gun.” Ex. 2011, 12:15–20; see also id. at 12:21–
13:6 (testifying that the buffer tube includes a spring and weight), 14:2–12
(testifying that the 1918 Browning BAR rifle also included a buffer tube
similar to that of the AR15). When asked if “[i]n a firearm would all tubular
members be referred to as buffer tubes,” Mr. Nixon answered, “No.” Id. at
16:15–17.
On the complete record, we find that the term “buffer tube” is a term
of art. We conclude that a person having ordinary skill in the art would
understand this term to mean “a cylindrical lower receiver extension that

9 Patent Owner and Dr. Harrison refer to this manual as a “1987 manual.”
Exhibit 2010 indicates that it is “current as of December 1996, and
supersedes the version dated August 1987. Ex. 2010, 1, 2–17 (providing
dated changes to subsequent versions).
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houses the buffer assembly of a firearm.” We credit Dr. Harrison’s
unrebutted testimony. First, we find that his testimony is consistent with the
evidence of record. Exhibit 2010, a U.S. Army technical manual, describes
a buffer assembly. Ex. 2010, 25, 95–98, 196–197, 200. Although directed
to a 5.56 millimeter M16A2 Rifle, a 5.56 millimeter M4 Carbine, and a 5.56
millimeter M4A1 Carbine, rather than a handgun, the use of the term “buffer
assembly” provides some corroborating evidence for Dr. Harrison’s
testimony.
Second, and more significantly, Mr. Nixon’s testimony supports
Dr. Harrison’s testimony regarding the use of “buffer tube” as a term of art
and what that term means. See Ex. 2011, 12:15–20, 12:21–13:6, 14:2–12;
Ex. 1002 ¶ 4.
Also, we conclude that our construction is consistent with the intrinsic
record, which indicates that a buffer tube is a unique structure that is distinct
from a generic cylindrical extension from the rear of a handgun.
In summary, we conclude that the term “buffer tube” means “a
cylindrical lower receiver extension that houses the buffer assembly of a
firearm.”
2. “elastomeric material”
Claim 2 depends directly from independent claim 1 and recites
“wherein said spaced flaps are constructed of an elastomeric material and at
least partially conform to and grip a user’s forearm when the user’s forearm
is disposed between said spaced flaps.” Ex. 1001, 6:17–20. Similarly, claim
11 depends directly from independent claim 10 and recites “wherein said
pair of spaced flaps are constructed of an elastomeric material.” Id. at 7:5–6.
Patent Owner argues that a person having “ordinary skill in the
engineering arts and sciences understands that the ordinary meaning of the
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term elastomer or ‘elastomeric material’ refers to a rubber-like polymer with
a large range of elastic deformation and low rigidity.” PO Resp. 7–8
(referencing Ex. 2009 ¶ 40; Ex. 2011, 30:10–14). Patent Owner argues that
its proposed construction is supported by the Specification of the ’444
patent, which states that the flaps may “be made of an elastomer or
elastomeric material that can substantially conform to the shape of the
shooter’s forearm.” PO Resp. 8 (referencing Ex. 1001, 4:4–6). Patent
Owner adds that “the ’444 [p]atent itself differentiates between a rigid
material and an elastomeric material in describing a non-limiting example
where ‘the upper portion 20 could be formed of a rigid or non-elastomeric
material and the lower portion 22 could be formed of a resilient material.’”
Id. (quoting Ex. 1001, 4:27–31); see also id. at 8–9 (referencing Ex. 1001,
5:44–47).
Petitioner replies that Patent Owner’s construction is “unduly narrow
and includes vague terms of degree.” Reply 4. Petitioner argues that Patent
Owner’s construction “is more appropriately associated with the noun
‘elastomer.’” Id. Petitioner argues that the claim term includes the suffix
“ic,” which changes the term to an adjective. Id. Petitioner argues that, as
such, the claim merely requires that the recited material be polymer-like. Id.
at 4–5 (referencing Ex. 1022 ¶ 7).
Petitioner directs us to a dictionary definition of elastomeric, which
defines the term as “[a]ny material having the properties of being able to
return to its original shape after being stressed.” Reply 5 (referencing
Ex. 1023). Petitioner argues that the intrinsic record for the ’444 patent
“indicates no intention to depart from” this dictionary definition. Id.
Patent Owner replies that Petitioner’s proposed construction ignores
the final clause of the definition from Exhibit 1023—“such as a roofing
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material that can expand and contract without rupture.” Sur-reply 4
(emphasis omitted); see Ex. 1023. Patent Owner argues that Petitioner’s
definition is from an architectural dictionary, which is not probative of how
a person having ordinary skill in the art of the ’444 patent would understand
the term. Sur-reply 4.
Patent Owner also argues that Petitioner’s grammatical analysis is
flawed, as the use of a word as an adjective “should not transform the use of
the term entirely outside the accepted definition of its noun form
‘elastomer.’” Sur-reply 5.
Based on the complete record, we construe the term “elastomeric
material” to require the material of the spaced flaps to be made of an
elastomer.10 Again, we start with the words of the claims. Claim 2 requires
the “spaced flaps” to be “constructed of an elastomeric material” and also
requires the spaced flaps to “at least partially conform to and grip a user’s
forearm when the user’s forearm is disposed between” the flaps. Ex. 1001,

10 An elastomer is a polymer with properties similar to natural rubber.
Larranaga, Michael D., Richard J. Lewis, and Robert A. Lewis, Hawley’s
Condensed Chemical Dictionary (16th ed.) (2016), John Wiley & Sons
(Ex. 3001, 3); accord Daintith, John, Oxford Dictionary of Chemistry (6th
ed.), Oxford Univ. Press (2008) (Ex. 3002, 3); Phillips, 415 F.3d at 1318
(“Because dictionaries, and especially technical dictionaries, endeavor to
collect the accepted meanings of terms used in various fields of science and
technology, those resources have been properly recognized as among the
many tools that can assist the court in determining the meaning of particular
terminology to those of skill in the art of the invention.”); cf. Ex. 2009 ¶ 40
(“One of ordinary skill in the engineering arts and sciences understands that
the ordinary meaning of the term elastomer or “elastomeric material” refers
to a rubberlike polymer . . . .”); Ex. 2011, 30:10–14 (Mr. Nixon defining
elastomer as “a polymer material which could be deformed and recovered to
its original shape”).
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6:17–20. Claim 11 merely requires the “pair of spaced flaps” to be
“constructed of an elastomeric material.” Id. at 7:5–6.
We agree with Petitioner that the word “elastomeric” is used as an
adjective in claims 2 and 11—modifying the word “material” in both claims.
As such, the plain language of the claims requires the material of the spaced
flaps to be made of an elastomer. Claim 2 supports this understanding, as it
requires the spaced flaps to at least partially conform to and grip the user’s
arm. That is, the material of the spaced flaps must have sufficiently low
rigidity to conform to the user’s arm.
The Specification supports our construction. The Specification states
that flaps 28 and 30 are made of a “semi-rigid elastomeric material,” such
that the flaps “conform to the user’s forearm 34.” Ex. 1001, 4:4–6; see also
id. at Fig. 2 (showing flaps 28, 30). The Specification describes body 14 of
the preferred embodiment, including flaps 28 and 30, as made of a semi-
rigid, elastomeric material, such as “rubber, foam rubber or the like
material.” Id. at 3:32–35; cf. id. at 4:23–34 (describing an alternative
embodiment, with upper portion 20 of body 14 being made of a rigid, non-
elastomeric material, and the flaps made of a resilient material, so that the
flaps at least partially conform with the user’s forearm).
The prosecution history also supports our construction. During
prosecution, the applicant amended pending claim 10 (which issued as claim
2), to distinguish it from the prior art, by replacing “a resilient material” with
“an elastomeric material.” Ex. 1003, 166, 173–174. As such, the applicant
narrowed the scope of claim 2 from covering a resilient material to the
narrower, elastomeric material. That is, the material is not merely like an
elastomer (which would include a resilient material), but is made of an
elastomer.
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We give very little weight to Petitioner’s extrinsic evidence. As
Patent Owner argues, Petitioner’s dictionary definition is from the
architectural arts. See Ex. 1023, 1 (providing two similar definitions, one
from the “Illustrated Dictionary of Architecture” and one from the
“McGraw-Hill Dictionary of Architecture and Construction”). Also,
Petitioner’s dictionary definitions would encompass any resilient material.
As such, the definition contradicts the applicant’s narrowing of the claim.
See Phillips, 415 F.3d at 1322–23 (“[J]udges are free to consult dictionaries
. . . when construing claim terms, so long as the dictionary definition does
not contradict any definition found in or ascertained by a reading of the
patent documents.”); see also id. at 1322 (“Moreover, different dictionaries
may contain somewhat different sets of definitions for the same words. A
claim should not rise or fall based upon the preferences of a particular
dictionary editor, or the court’s independent decision, uninformed by the
specification, to rely on one dictionary rather than another.”).
In summary, we construe the term “elastomeric material” to require
the material of the spaced flaps to be made of an elastomer.
3. Preambles of claims 1, 6, and 10
The preamble of claim 1 recites “[a] forearm-gripping stabilizing
attachment for a handgun, the handgun having a support structure extending
rearwardly from the rear end of the handgun, the forearm-gripping
stabilizing attachment.” Ex. 1001, 5:66–6:2. Claim 10 has an identical
preamble. Id. at 6:54–57. The preamble of claim 6 recites “[i]n
combination a forearm-gripping stabilizing attachment and a handgun.” Id.
at 6:29–30. “[A] preamble limits the invention if it recites essential structure
or steps, or if it is ‘necessary to give life, meaning, and vitality’ to the
claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
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808 (Fed. Cir. 2002) (quoting Pitney Bowes, Inc. v. Hewlett-Packard Co.,
182 F.3d 1298, 1305 (Fed. Cir. 1999)). “[W]hen the limitations in the body
of [a] claim ‘rely upon and derive antecedent basis from the preamble, then
the preamble may act as a necessary component of the claimed invention.’”
Bicon, Inc. v. Straumann Co., 441 F.3d 945, 952 (Fed. Cir. 2006) (quoting
Eaton Corp. v. Rockwell Int’l Corp., 323 F.3d 1332, 1339 (Fed. Cir. 2003)).
“Whether to treat a preamble as a limitation is a determination ‘resolved
only on review of the entire[ ] . . . patent to gain an understanding of what
the inventors actually invented and intended to encompass by the claim.’”
Catalina Mktg. Int’l, Inc., 289 F.3d at 808 (alterations in original) (quoting
Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257
(Fed. Cir. 1989)).
We conclude that the preambles of claims 1, 6, and 10 are limiting.
Each preamble recites “essential structure” for the claim. See Catalina
Mktg. Int’l, Inc., 289 F.3d at 808. The preamble of each of claims 1 and 10
recites a handgun and a support structure extending rearwardly from the
handgun. The body of each of these claims requires that, when the
stabilizing attachment (recited in the preamble) is attached to a user’s
forearm, a strap secures flaps to the user’s forearm. The body of each of
these claims also recites that the support structure is telescopically
receivable by the passage in the upper portion of the forearm-gripping
stabilizing attachment. The body of claim 6 recites a support structure
extending rearwardly outward from the handgun, which is recited in the
preamble.
Supporting our conclusion is that the support structure and stabilizing
attachment receive antecedent bases from the preamble of each of claims 1
and 10 and the handgun and stabilizing attachment receive antecedent bases
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from the preamble of claim 6. Also, in reviewing the Specification, we find
that what the inventor invented was a forearm-gripping stabilizing
attachment that attaches to a support structure at the rear of a handgun. See,
e.g., Ex. 1001, Fig. 1 (depicting the invention), 1:44–47 (“Embodiments of
the present invention . . . provid[e] a new and specially designed stabilizing
attachment that secures to the rearward end of a handgun and which grips a
user’s forearm . . . .”); PO Resp. 3 (“The ‘444 [p]atent discloses and claims a
stabilizing attachment for a handgun that has a support structure extending
rearwardly from the rear end of the handgun.”).
In summary, we conclude that the preambles of claims 1, 6, and 10 are
“‘necessary to give life, meaning, and vitality’ to the claim[s],” and, as such,
are limiting. See Catalina Mktg. Int’l, Inc., 289 F.3d at 808.
C. Applicable Law Governing Unpatentability
In inter partes reviews, a petitioner bears the burden of proving
unpatentability of the challenged claims, and the burden of persuasion never
shifts to the patent owner. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
800 F.3d 1375, 1378 (Fed. Cir. 2015). To prevail in this proceeding,
Petitioner must support its challenge by a preponderance of the evidence.
35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d). Accordingly, all of our findings
and conclusions are based on a preponderance of the evidence standard.
Petitioner’s asserted grounds of unpatentability are based on
obviousness under 35 U.S.C. § 103(a).
Section 103(a) forbids issuance of a patent when “the differences
between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to which said subject matter pertains.”
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KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations,
including: (1) the scope and content of the prior art; (2) any differences
between the claimed subject matter and the prior art; (3) the level of ordinary
skill in the art; and (4) when available, objective evidence, such as
commercial success, long felt but unsolved needs, and failure of others.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
“[O]bviousness must be determined in light of all the facts, and . . . a
given course of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to combine” teachings from
multiple references. Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (emphasis added); see also PAR Pharm., Inc. v. TWI
Pharms., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014) (“The presence or
absence of a motivation to combine references in an obviousness
determination is a pure question of fact.”).
We must always consider, as part of an obviousness inquiry, objective
evidence of non-obviousness, or secondary considerations evidence, when
present. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling
USA, Inc., 699 F.3d 1340, 1349 (Fed. Cir. 2012). Notwithstanding what the
teachings of the prior art would have suggested to one with ordinary skill in
the art at the time of the patent’s invention, the totality of the evidence
submitted, including objective evidence of nonobviousness, may lead to a
conclusion that the challenged claims would not have been obvious to one
with ordinary skill in the art. In re Piasecki, 745 F.2d 1468, 1471–72 (Fed.
Cir. 1984). Secondary considerations may include long-felt but unsolved
need, failure of others, unexpected results, commercial success, copying,
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licensing, and praise. See Graham, 383 U.S. at 17–18; Leapfrog Enters.,
Inc. v. Fisher–Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
We address Petitioner’s ground contending that the Challenged
Claims are unpatentable as obvious over Forjot and Morgan (Ground 3) first,
then address Petitioner’s other three asserted grounds.
D. Ground 3: Claims 1–14 as Allegedly Obvious Over Forjot and
Morgan
Petitioner contends that Forjot, in combination with Morgan, renders
obvious the subject matter of independent claims 1, 6, and 10 and dependent
claims 2–5, 7–9, and 11–14. Pet. 2, 16–25, 26–27.11 In the subsections
below, we discuss the scope and content of the prior art and any differences
between the claimed subject matter and the prior art, on a limitation-by-
limitation basis. We also discuss Patent Owner’s objective evidence of
non-obviousness.
1. Independent claims 1, 6, and 10
a) Claim 1
(1) Preamble
The preamble of claim 1 recites “[a] forearm-gripping stabilizing
attachment for a handgun, the handgun having a support structure extending
rearwardly from the rear end of the handgun.” Ex. 1001, 5:66–6:2.
Petitioner contends that Forjot’s cuff corresponds to the recited forearm-
gripping stabilizing attachment and that Forjot’s cuff is for a handgun.

11 Petitioner incorporates its contentions with respect to its first ground, that
the combination of Forjot with the knowledge of a person having ordinary
skill in the art renders obvious the Challenged Claims, into its ground
relying on the combined teachings of Forjot and Morgan. Pet. 26.
Accordingly, we address Petitioner’s contentions with respect to Ground 1
as part of our analysis of Ground 3.
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Pet. 16–17 (referencing Ex. 1008, 2:3–7, 2:51–52; Ex. 1002 ¶¶ 45–46).
Petitioner adds that Forjot’s cuff is attached to a tube, corresponding to the
recited support structure. Id. at 17; see also Ex. 1008, Fig. 1 (depicting
tube 2 extending rearwardly from a gun).
We have reviewed Petitioner’s contentions and find, on the complete
record, that Petitioner has demonstrated, by a preponderance of the evidence,
that Forjot discloses the subject matter of the preamble of claim 1. See
Ex. 1008, 2:3–7 (disclosing cuff 1, which attaches to the rear end of tube 2
extending from butt 5 of the gun), 2:51–52 (indicating that Forjot’s
invention can be applied to land-based weapons), Fig. 1 (depicting cuff 1
gripping an arm and attached to tube 2). Patent Owner does not dispute
Petitioner’s contentions with respect to the subject matter of the preamble of
claim 1.
(2) Body limitation
Claim 1 also recites “a body having a front end, a rear end, an upper
portion, a lower portion, and a passage longitudinally extending within said
upper portion and at least through said front end of said body, the support
structure of the handgun being telescopically receivable by said passage.”
Ex. 1001, 6:3–7 (the “body” limitation of claim 1). Petitioner contends that
Forjot discloses the subject matter of the “body” limitation of claim 1 and
provides an annotated version of a portion of Forjot’s Figure 1 in support of
its contention. Pet. 18 (referencing Ex. 1002 ¶ 49). We reproduce this
annotated figure, below.
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This annotated figure provides a portion of Forjot’s Figure 1 depicting cuff 1
and tube 2, with annotations pointing to the recited components of the
“body” limitation. Petitioner adds that “Fig[ure] 1 of Forjot also shows ‘the
support structure of the handgun [tube 2] telescopically receivable by said
passage.’” Id. (second alteration in original) (referencing Ex. 1008, 2:6–7;
Ex. 1002 ¶ 50).
We have reviewed Petitioner’s contentions and find, on the complete
record, that Petitioner has demonstrated, by a preponderance of the evidence,
that Forjot discloses the subject matter of the “body” limitation of claim 1.
We find that Petitioner’s annotated characterization of Forjot’s cuff 1,
reproduced above, appropriately identifies the recited components in the
“body” limitation of claim 1. We also find that Figure 1 shows that tube 2 is
telescopically received in the identified passage in the upper portion of
cuff 1, as illustrated by the dashed lines in the figure. See also Ex. 1008,
Fig. 2 (showing a front view of cuff 1).
Patent Owner does not dispute Petitioner’s contentions with respect to
the subject matter of the “body” limitation of claim 1.
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(3) Lower portion limitation
Claim 1 also recites “said lower portion being bifurcated so as to
define a pair of spaced flaps between which a user’s forearm is received
when securing the stabilizing attachment to the user’s forearm.” Ex. 1001,
6:8–11 (the “lower portion” limitation). Petitioner contends that Forjot’s
cuff 1 includes a bifurcated lower portion defining flaps that receive a user’s
forearm. Pet. 18–19 (referencing Ex. 1008, 2:27–31, Fig. 2; Ex. 1002 ¶¶ 51–
52); compare Ex. 1008, Fig. 2 (showing a view of cuff 1 from the front of
the cuff), with Ex. 1001, Fig. 2 (showing a rear elevation view of an
exemplary embodiment having a bifurcated lower portion that defines flaps).
We have reviewed Petitioner’s contentions and find, on the complete
record, that Petitioner has demonstrated, by a preponderance of the evidence,
that Forjot discloses the subject matter of the “lower portion” limitation of
claim 1. Forjot’s cuff 1 includes a bifurcated lower portion for receiving a
user’s forearm. See Ex. 1008, Fig. 2 (showing the bifurcated lower portion,
with spaced flaps), Fig. 1 (showing a user’s forearm received in the cuff),
2:6–9 (describing that screw 3 adjusts opening 4), 2:25–32 (describing that a
user bends the ends of the cuff to secure the cuff to the user’s arm).
Patent Owner does not dispute Petitioner’s contentions with respect to
this limitation.
(4) Strap limitation
Finally, claim 1 recites “a strap connected to said body, said strap
securing said spaced flaps to retain the user’s forearm between said spaced
flaps when the stabilizing attachment is secured to a user’s forearm.”
Ex. 1001, 6:12–15 (the “strap” limitation). Petitioner acknowledges that
Forjot does not disclose the recited strap. Pet. 19, 26. Petitioner contends
that “[u]sing straps to secure a firearm support to a user’s forearm, however,
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was known and obvious at the time the ’444 patent was filed.” Id. at 19
(referencing Ex. 1002 ¶ 53). Petitioner contends that:
It would have been obvious to add a strap to Forjot in view of
Morgan because Morgan teaches using a pair of straps 142 in
conjunction with wrist support 136 and forearm support 138 to
secure a handgun support member 12, and it would have been
obvious to use a strap in the same way in Forjot to better secure
the cuff 1 to the forearm, which is a goal of Forjot.
Id. at 26 (referencing Ex. 1002 ¶ 59).
Petitioner explains that “[f]orearm support 138 of Morgan and cuff 1
of Forjot are also similarly shaped, making the addition of a similar strap to
the cuff of Forjot even more straightforward.” Pet. 26 (referencing Ex. 1002
¶ 59). Petitioner adds that “[i]t would also have been obvious to combine
these teachings because both references have the same goal, to better aim a
pistol.” Id. (referencing Ex. 1008, 2:67–68; Ex. 1010, 1:7–8; Ex. 1002
¶ 59).
Mr. Nixon declares that “[s]traps have been used in firearms
throughout history.” Ex. 1002 ¶ 40. Mr. Nixon explains that “[r]ifle
shooters are trained to wrap their rifle sling (strap) around their support arm
(left arm for a right handed shooter) to enhance the support that they give to
the rifle, thereby minimizing perturbations, and maximizing accuracy.” Id.;
see also id. ¶ 43 (discussing Morgan); Ex. 1013 (U.S. Marine Corp. Rifle
Marksmanship manual); Ex. 1010, 1:34–35 (“[T]he purpose of providing a
support that is mounted onto the arm [is] to steady the aim of a handgun
user.”).
Mr. Nixon also testifies that Morgan’s two-piece strap would benefit
Forjot’s cuff “[b]ecause you can tighten the strap and that’s all you need to
do.” Ex. 2011, 70:12–21; see also Ex. 1010, 5:60–62 (“The plurality of
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straps of each of the arm supports secures the arm of the hand gun user to
the elongated support member. In use the wrist support goes over the wrist
with the straps.”), 6:1–4 (“The apparatus will help to prevent movement of
the arm and wrist while holding and firing the hand gun. The arm and hand
gun support apparatus is mounted onto the arm of the user.”).
Further in support of its position, Petitioner argues that the ’444 patent
Specification “acknowledges” that straps to secure a firearm support to a
user’s forearm were known and obvious, with the Specification stating,
“[o]ne of ordinary skill in the art will readily appreciate the function of strap
36 and recognize many suitable arrangements for the purpose of securing the
body 14 about a user’s forearm.” Pet. 19–20 (quoting Ex. 1001, 4:19–22).
Petitioner explains that the patentee added the “strap” limitation during
prosecution to overcome Owen12. Id. at 20.
Petitioner reasons that:
Forjot is concerned with the same goal as the ’444 patent, i.e., to
stabilize and aim a handgun. . . . It would have been obvious to
one having ordinary skill in the art to add a strap to Forjot
because it was well known to use straps in general to
mechanically secure one element to another, and the use of straps
to secure guns and gun supports to a user were notoriously well
known. It would have been a simple task to add a strap to
Forjot. . . . The use of straps to secure firearms has been known
for centuries and the stated goal of Forjot is to “rigidly hold the
forearm.” The motivation for the modification is suggested by
Forjot and the added strap is being used for its known
purpose. . . . This is simply using a well-known structure in a
well-known way and therefore obvious.
Pet. 20–21 (citations omitted) (referencing Ex. 1002 ¶¶ 55–56; Ex. 1008,
2:57).

12 Owen, Jr., US 4,196,742, issued April 8, 1980 (Ex. 1005, “Owen”).
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(a) Arguments addressing motivation to
combine generally
Patent Owner responds that:
Forjot’s solution provides for more precise aim of the speargun
once the hunter has his/her “forearm, easily and quickly
engaged in the cuff by bending these ends, forming a clamp”
because “he/she will have thus achieved a perfect connection of
the weapon with his/her arm.” “Therefore, the invention
essentially resides upon the absolute connection of the pistol or
rifle weapon by the cuff 1 to the arm” allowing for better
targeting of prey “by connecting the arm of the hunter with
his/her weapon in an extremely rigid way.”
PO Resp. 20 (citations omitted) (quoting Ex. 1008, 2:25–31, 2:35–45).
Patent Owner argues that a person having ordinary skill in the art
“would not be motivated to modify the cuff taught by Forjot by adding a
strap, because doing so would frustrate Forjot’s expressly taught objective
that the hunter’s forearm be ‘easily and quickly engaged in the cuff by
bending [the] ends, forming a clamp.’” PO Resp. 21 (alteration in original)
(referencing Ex. 2009 ¶ 23). Patent Owner adds that adding a strap would
make engaging Forjot’s cuff with the user’s “forearm more difficult and
time-consuming.” Id. (referencing Ex. 2007 ¶ 23). Patent Owner argues
that “[t]he mere fact that the prior art could be so modified would not have
made the modification obvious unless the prior art suggested the desirability
of the modification.” Id. at 22 (quoting In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984)).
Patent Owner argues that “[b]ecause Forjot describes the invention as
already providing the more secure attachment in an absolute and perfect
way, there would be no motivation . . . to add [Morgan’s] strap to the device.
PO Resp. 42 (referencing Ex. 2009 ¶ 35).
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Petitioner replies that “Forjot provides motivation to use a strap
(aiming and providing a rigid, integral connection with the forearm) and that
motivation is directly tied to a well-known purpose of a strap in the art that
is demonstrated by . . . Morgan.” Reply 7–8. Petitioner argues that Forjot’s
use of the phrase “perfect connection” would not discourage the proposed
modification. Id. at 8–9 (referencing testimony of Mr. Nixon (Ex. 1022
¶¶ 2–3) and Dr. Harrison (Ex. 1021, 38:21–39:2)). Petitioner adds that, as
Mr. Nixon declares, Forjot’s open cuff design would experience slipping.
Id. at 9 (referencing Ex. 1022 ¶ 4). Petitioner argues that Dr. Harrison
agrees that the cuff slipping is a potential problem of Forjot, and that a strap
would prevent slipping. Id. at 10 (referencing Ex. 1021, 41:6–9, 42:9).
Petitioner argues that Patent Owner has not demonstrated that one of
Forjot’s primary purposes is to quickly engage cuff 1 or that using a strap
would be difficult and time consuming. Reply 10–11. Petitioner argues that
Forjot’s primary objectives are to have improved aim without shouldering a
weapon and to form a rigid, integral connection between the user’s arm and
weapon. Id. at 11. Petitioner argues that Patent Owner’s declarant,
Dr. Harrison, confirms that a strap would not frustrate these principle
objectives. Id. (referencing Ex. 1021, 47:23–24). Petitioner argues that
Patent Owner provides no support for its contention that employing a strap
would be difficult and time consuming. Id. Petitioner adds that “Mr. Nixon
notes that Velcro straps and releasable buckles have been used extensively in
the firearm industry prior to the priority date of the ’444 patent.” Id. at 11–
12 (referencing Ex. 1022 ¶ 5). Petitioner concludes that a person having
ordinary skill in the art would have “trade[d] off the tiny increase in the time
to engage the forearm to improve the connection with the forearm, provide a
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more secure interface, and prevent slippage.” Id. at 12 (referencing
Ex. 1022 ¶ 5).
Patent Owner replies that “Forjot’s express use of the term ‘perfect’
[when referring to the connection between the cuff and user’s forearm]
indicates the connection is not an area of concern for a [person having
ordinary skill in the art] looking to improve Forjot.” Sur-reply 10.
With respect to Petitioner’s reasoning directed to slipping, Patent
Owner argues that Dr. Harrison expressly testified in his deposition that
adding a strap would not prevent slipping “in a way that would be
compatible with Forjot’s teaching of quick and easy connection.” Sur-reply
11 (referencing Ex. 1021, 43:4–12). Patent Owner also argues that Forjot
expressly discloses a desire for easy and quick engagement of the cuff with
the user’s arm, which discourages adding a strap. Id. at 12 (referencing
Ex. 1021, 43:4–12). Patent Owner argues that any additional time to
connect a strap would be undesirable and discourage the proposed
modification. Id. at 12–13. Patent Owner adds that “there needs to be a
quick and easy engagement that is faster than shouldering the weapon, but
integral enough with the arm to provide the same stability when firing.” Id.
at 13 (referencing (Ex. 2009 ¶ 22).
(b) Arguments addressing the operation
of Forjot’s screw 3
Next, Patent Owner argues that Petitioner’s declarant, Mr. Nixon,
misunderstands the teachings of Forjot and, as a result, undermines
Petitioner’s obviousness analysis. PO Resp. 23. Patent Owner argues that
Mr. Nixon fails to appreciate that screw 3 functions to tighten cuff 1 to the
user’s arm. Id. (referencing Ex. 2011, 41:1–23, 43:2–19, 51:2–12). Patent
Owner argues that Forjot teaches that screw 3 adjusts opening 4, which is
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the opening through which a user places his or her forearm. Id. at 24
(referencing Ex. 1008, 2:5–9; Ex. 2009 ¶ 21). Patent Owner argues that
Mr. Nixon’s position that it would have been obvious to add a strap to
Forjot’s cuff is based on the faulty assumption that tightening screw 3 does
not tighten the cuff to the user’s arm. Id. (referencing Ex. 2009 ¶ 24).
Patent Owner argues that Forjot’s screw 3 is offset from tube 2 and, as
such, a person having ordinary skill in the art would have understood that
“after the screw 3 is tightened sufficiently to close the cuff 1 tightly around
the tube 2 to attach the cuff 1 to the tube 2, further tightening of the screw 3
will adjust the opening 4 of the lower part of the cuff 1 to be narrower.” PO
Resp. 24–25 (referencing Ex. 2009 ¶¶ 24–25). Patent Owner argues that
screw 3 together with the stiffness of cuff 1 allows the cuff to clamp a wide
range of forearm sizes. Id. at 25 (referencing Ex. 2009 ¶ 26). Patent Owner
argues that Forjot teaches that cuff 1 has elasticity and is secured to a user’s
forearm by bending the ends of the cuff to form a clamp. Id. (referencing
Ex. 1008, 2:27–29; Ex. 2009 ¶ 26). Patent Owner concludes that “one of
ordinary skill in the art would recognize that the amount of bending
deflection required for the opening 4 of the cuff 1 to flex around a forearm
of a particular size can be adjusted by tightening or loosening the screw 3.”
Id. (referencing Ex. 2009 ¶¶ 26–27).
Patent Owner reasons that screw 3 allows cuff 1 to provide an
“absolute connection of the . . . weapon . . . to the arm” and provide
“extremely rigid” clamping without a strap. PO Resp. 26 (referencing
Ex. 1008, 2:35–43; Ex. 2009 ¶ 28).
Petitioner replies that Patent Owner’s assessment that screw 3 is used
to tighten the cuff to the user’s arm is contrary to Patent Owner’s assertion
that Forjot requires quick engagement, as tightening the screw and bending
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the cuff would be difficult and time consuming. Reply 13–14. Petitioner
argues that Mr. Nixon’s assessment is the “sensible” reading of Forjot—that
the user employs screw 3 to tighten the cuff to tube 2, and then screw 3 is
not adjusted further. Id. at 14 (referencing Ex. 1022 ¶ 8). Petitioner adds
that the express disclosure in Forjot states that engaging the cuff to the user’s
arm is accomplished by bending the ends of the cuff and does not mention
screw 3. Id. (referencing Ex. 1008, 3:27–29).
Patent Owner replies that Forjot’s statement about bending the ends of
the cuff begins with the phrase “[f]rom the forgoing,” which is a reference to
the operation of screw 3. Sur-reply 15. Patent Owner argues that “it is
apparent that both the screw and elastic bending of the cuff to accommodate
the forearm provide the adjustability to form an adequate connection with
various forearm sizes,” which “obviates any need for a strap.” Id. at 15–16.
(c) Arguments addressing whether
proposed modification renders Forjot
inoperable for its intended purpose
Next, Patent Owner additionally responds that adding a strap would
render Forjot inoperable for its intended purpose—“allowing for a quick
engagement between the user and speargun to achieve integration.” PO
Resp. 27 (referencing Ex. 2009 ¶ 22). Patent Owner argues that the
proposed modification “would frustrate Forjot’s express teaching about the
desirability of ‘easily and quickly engaged in the cuff by bending [the] ends,
forming a clamp’ in order to arrive at the rigid connection and integration of
the user’s arm and speargun.” Id. at 28 (alteration in original) (referencing
Ex. 1008, 2:27–29). Patent Owner argues that “[a]dding a strap to the cuff
of Forjot would add sufficient delay in achieving the connection, thereby
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frustrating the purpose of the ‘fast’ connection.” Id. (referencing Ex. 1008,
1:19–20).
Petitioner replies that adding a strap to Forjot would not render Forjot
inoperable for its intended purpose as a strap does not change the basic
principles of operation of Forjot. Reply 12–13. Petitioner argues that
Forjot’s primary goals “are better aiming, avoiding shouldering, and forming
a rigid, integral connection with the shooter’s arm.” Id. at 11 (referencing
Paper 10 (“Dec. on Inst.”), 17; Ex. 1022 ¶ 6). Petitioner argues that
Dr. Harrison admits that adding a strap would not frustrate these objectives.
Id. Petitioner also argues that Patent Owner does not support its position
that using a strap would be difficult and time consuming. Id.
Patent Owner replies that “the ability of the forearm to be ‘quickly
and easily engaged in the cuff,’ to make the weapon integral with the arm
without shouldering is an intended purpose of Forjot. Sur-reply 14
(referencing Ex. 1008, 2:25–31).
(d) Arguments addressing whether using
straps to secure a firearm was known
Next, Patent Owner responds that the language in the ’444 patent on
which Petitioner relies does not support the contention that using straps to
secure a firearm support to a user’s forearm was known. PO Resp. 28
(addressing Pet. 19; Ex. 1001, 4:19–22). The disclosure at issue states:
“One of ordinary skill in the art will readily appreciate the function of strap
36 and recognize many suitable arrangements for the purpose of securing the
body 14 about a user’s forearm.” Ex. 1001, 4:19–22. Patent Owner argues
that this passage merely provides that the disclosure in the ’444 patent “is
sufficient for one of ordinary skill in the art to appreciate the function and
suitable alternative arrangements – claimed or unclaimed – of the disclosed
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strap 36 in the context of the other features disclosed by the ’444 [p]atent.”
PO Resp. 28–29.
(e) Arguments addressing “most likely
result” of combined teachings
Finally, Patent Owner responds that Petitioner fails to explain
adequately why a person having ordinary skill in the art would combine
Morgan’s teachings of a strap to Forjot’s cuff rather than add Forjot’s cuff to
Morgan’s brace, as such a modification would “be the most likely result” of
the combined teachings of Forjot and Morgan. PO Resp. 43. Patent Owner
also argues that Petitioner’s proposed modification discards Morgan’s
teachings of a U-shaped barrel rest. Id. at 44. Patent Owner also argues
“that supporting the U-shaped barrel rest of Morgan under the minor weight
of a handgun barrel does not require much force, and that the cuff of Forjot
already clamps to the shooter’s forearm sufficiently for that purpose.” Id.
Petitioner replies that Patent Owner’s position as to the “most likely
result” of combining Forjot and Morgan ignores the claimed invention.
Reply 14. That is, the obviousness analysis under Graham looks at the
differences between the prior art and the claimed invention. Id. Petitioner
argues that Patent Owner fails to cite to any authority to support its “most
likely result” theory, which is contrary to the law. Id. at 15.
Patent Owner replies its “most likely result” analysis illustrates that
“the [P]etition failed in its burden to justify its specific combinations of
cherry-picked subsets of elements selected from [Forjot and Morgan], at the
exclusion of other unselected elements.” Sur-reply 16; see id. at 16–17
(citing Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011)). Patent Owner argues that “Petitioner fails to consider the motivation
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required to combine specific elements of references to arrive at” the
invention of claim 1. Id. at 17.
(f) Analysis of the parties’ arguments
We have evaluated Petitioner’s and Patent Owner’s arguments and
weighed the supporting evidence. We find that Petitioner had demonstrated,
by a preponderance of the evidence, that a person having ordinary skill in
the art would have had reason to combine Morgan’s teaching of straps for its
forearm support with Forjot’s cuff. Specifically, we find that a person
having ordinary skill in the art would have added a strap to Forjot’s cuff to
better secure cuff 1 to a user’s forearm. See Pet. 26; Ex. 1002 ¶ 59.
We find that Petitioner’s reasoning is supported by rational
underpinnings. See KSR Int’l, 550 U.S. at 418. First, we find that Morgan
itself suggests the modification. As Petitioner contends, Morgan discloses a
handgun support with a similarly shaped structure for receiving a user’s
forearm and that structure is secured to the forearm using straps. See
Pet. 26; see also Ex. 1010, 5:51–6:4, Figs. 1, 7. Morgan expressly discloses
that its arm support “help[s] to prevent movement of the arm . . . while
holding and firing the hand gun.” Ex. 1010, 5:66–6:2.
We credit Mr. Nixon’s Declaration and deposition testimony, in part,
because it is consistent with Morgan’s teachings. See Ex. 1002 ¶ 59;
Ex. 2011, 70:12–21. For example, Morgan discloses that each strap has a
“pile-type fastener,” that is, hook and loop type fastener, which can be
simply secured. See Ex. 1001, 5:54–58; Reply 11–12; Ex. 1022 ¶ 5.
Second, we give weight to Dr. Harrison’s deposition testimony that a
strap would prevent a user’s forearm from slipping out of Forjot’s cuff. See
Ex. 1021 43:4–12 (“Adding a strap would prevent it slipping out, but it
wouldn’t prevent it in a way that would be compatible with Forjot’s teaching
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of quick and easy connection.”). We appreciate that Dr. Harrison prefaced
his statement with: “Forjot teaches to avoid [the forearm slipping out] by
tightening the screw 3 enough to where [a strap is] unnecessary, so that you
can maintain the quick and easy connection.” Id. We find, however, that
this prefacing statement overstates Forjot’s teachings. Forjot does disclose
that screw 3 adjusts opening 4, but does not go so far as to say that
tightening screw 3 would prevent a forearm from slipping out of cuff 1.
Third, we find that the level of ordinary skill in the art is sufficiently
high— a bachelor’s degree in mechanical engineering and 2 to 3 years of
experience in handgun use, procurement, repair, design, or manufacturing—
to appreciate the role Morgan’s straps play in securing its support to a user’s
arm. See KSR Int’l, 550 U.S. at 417 (“[I]f a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
We are not persuaded that Petitioner’s proposed modification would
render Forjot inoperable for its intended purpose. As Petitioner asserts,
Forjot’s intended purpose is to “give [an] underwater pistol and rifle the
rigidity sought after to ensure aim, but . . . without using the shoulder” or
“make [a] weapon integral with the arm.” Reply 11; see Ex. 1008, 1:32–36
(“[I]f one could give the underwater pistol and rifle the rigidity sought after
to ensure aim, but of course without using the shoulder, one would obtain a
very great advantage in the use of these weapons.”), 2:5–6 (“This cuff is
intended to make the weapon integral with the arm.” (emphasis added)).
Although quick engagement may be a feature of Forjot’s design—a feature
that we weigh in our analysis—it is not the invention’s intended purpose. A
strap would provide the requisite rigidity to allow the weapon to be aimed
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without shouldering the weapon. We credit Mr. Nixon’s testimony, as it is
consistent with the evidence of record. See Ex. 1022 ¶ 6 (“The strap would
improve on [Forjot’s] objectives by preventing the forearm from slipping out
of the cuff, and providing a tighter connection than the cuff alone could
achieve, simply by cinching the strap tight.”); Ex. 1021 43:4–12; Ex. 1010,
5:60–62, 6:1–4); see also Ex. 1021, 47:5–49:10 (including the testimony “Q.
And the . . . advantages [of ‘improving aiming’ and providing a ‘rigid
attachment to the arm’] would not be frustrated by adding a strap? A.
Correct.”).
Also, we do not find that Forjot teaches away from the proposed
modification. “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994); see, e.g., In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (holding that, to teach away, the prior art must
“criticize, discredit, or otherwise discourage the solution claimed”). Patent
Owner does not direct us to any persuasive disclosure in Forjot that would
discourage a person having ordinary skill in the art from employing a strap
to further secure Forjot’s cuff, or otherwise criticize or discredit the
proposed modification. Again, although quick engagement may be a feature
of Forjot’s design, we do not discern anything in Forjot’s disclosure that
rises to the level of teaching away from adding a strap to further secure the
cuff.
In weighing the evidence, we do assign some weight to Forjot’s
disclosure that its design achieved an “absolute” or “perfect connection”
between the weapon and the user’s forearm. See PO Resp. 20; Ex. 1008,
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2:25–32; Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed.
Cir. 2018) (“But even if a reference is not found to teach away, its
statements regarding preferences are relevant to a finding regarding whether
a skilled artisan would be motivated to combine that reference with another
reference.”). However, in weighing all of the evidence, we find that this
disclosure in Forjot is insufficient to outweigh the evidence supporting
Petitioner’s reasoning. Forjot expressly characterizes the connection
between the weapon and the user’s arm as “perfect,” suggesting that it is the
overall configuration of how cuff 1 and plate 7 interact with both the user’s
arm and the weapon to “extend[ the arm] . . . to the end of the barrel.” See
Ex. 1008, 2:3–32. Also, we afford Dr. Harrison’s testimony little weight.
Dr. Harrison declared that “adding a strap to Forjot clamp would make
engagement to the forearm more difficult and time consuming,” thus
“frustrate[ing] Forjot’s expressly taught objective that the hunter’s forearm
be ‘easily and quickly engaged in the cuff.’” Ex. 2009 ¶ 23. Dr. Harrison
provides no support for this testimony. See 37 C.F.R. 42.65(a) (“Expert
testimony that does not disclose the underlying facts or data on which the
opinion is based is entitled to little or no weight.”).
Further, Patent Owner’s assertions with respect to the advantage of
quick engagement of the cuff with the user’s arm presumes that the weapon
is repeatedly engaged with the user’s arm, rather than engaged with the arm
initially, then maintained while hunting. Patent Owner does not direct us to
disclosure in Forjot that persuasively supports this position. See Tr. 35:16–
37–4. At oral hearing, Patent Owner’s counsel directed us to the following
in Forjot: “to quickly target the prey, to maintain this line of sight by
connecting the arm of the hunter with his/her weapon in an extremely rigid
way, thus giving more freedom to the hand to actuate the trigger and to
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attain the targeted prey with an almost absolute security.” Tr. 36:23–37:4;
Ex. 1008, 3:41–45. We interpret this passage, however, to not necessarily
say that the “connecting” takes place after the prey is targeted. Instead, this
passage can be read to mean that the targeting takes place while the arm is
already connected to the weapon, such that the line of sight formed by the
rigid connection between the arm and weapon allows for targeting and
attaining the prey. We also note that Forjot expressly states that his
invention may be employed for land-based hunting. Ex. 1008, 3:51–52. As
such, the effects of slowed movement in the water would be diminished.
See, e.g., Ex. 1021, 46:5–9 (“Q. And Forjot says he’s applicable to land-
based weapons as well. How long would it take to attach a Velcro strap if
Forjot was used on land? A. It would take less time than in water.”).
Accordingly, we afford some, but not substantial weight, to any
advantage for quick engagement for Forjot’s cuff with the user’s forearm
against Petitioner’s proposed combination.
Finally, we are not persuaded that Petitioner cherry-picked features
from Morgan—features that would not have led to the most likely result of
combining the references as a whole. We agree with Petitioner that, as part
of our obviousness analysis, we must determine the scope and content of the
prior art and any differences between the claimed subject matter and the
prior art. See Graham, 383 U.S. at 17–18. Here, we have ascertained the
scope and content of Forjot and Morgan and also found that Forjot differs
from the subject matter of claim 1 in that Forjot does not disclose the subject
matter of the strap limitation. Petitioner then proposes to modify Forjot with
Morgan’s teachings of a strap, and Petitioner has provided reasons to
support the proposed modification.
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Patent Owner’s reliance on Unigene Laboratories, Inc. is unavailing.
Indeed, Unigene Laboratories, Inc. states that “obviousness requires the
additional showing that a person of ordinary skill at the time of the invention
would have selected and combined those prior art elements in the normal
course of research and development to yield the claimed invention.” 655
F.3d at 1360. This showing is exactly what Petitioner has done—providing
reasons for why a person having ordinary skill in the art would have
combined Morgan’s strap with Forjot’s cuff.
Accordingly, for the reasons above, we find, on the complete record,
that Petitioner has demonstrated, by a preponderance of the evidence, that
the combination of Forjot and Morgan discloses the subject matter of the
“strap” limitation of claim 1. Also, we find that Petitioner has demonstrated,
by a preponderance of the evidence, that a person having ordinary skill in
the art would have been motivated to modify Forjot’s cuff by adding a strap
as taught by Morgan.
(5) Objective evidence of non-obviousness
Patent Owner presents objective evidence that purports to demonstrate
commercial success, copying, and licensing. See PO Resp. 54; see id. at 49–
56 (providing secondary considerations analysis). We must always consider,
as part of an obviousness inquiry, this type of objective evidence, or
secondary considerations evidence, when present. Transocean Offshore
Deepwater Drilling, Inc., 699 F.3d at 1349.
“For objective evidence to be accorded substantial weight, its
proponent must establish a nexus between the evidence and the merits of the
claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995).
The Board uses a two-step analysis in evaluating nexus between the claimed
invention and objective evidence. Lectrosonics, Inc. v. Zaxcom, Inc.,
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IPR2018-01129, Paper 33 at 33 (PTAB Jan. 24, 2020) (precedential). We
first consider whether the patent owner has demonstrated “that its products
are coextensive (or nearly coextensive) with the challenged claims,”
resulting in a rebuttable presumption of nexus. Id. If not, that “does not end
the inquiry into secondary considerations”; “the patent owner is still
afforded an opportunity to prove nexus by showing that the evidence of
secondary considerations is the ‘direct result of the unique characteristics of
the claimed invention.’” Id. (quoting Fox Factory, Inc. v. SRAM, LLC, 944
F.3d 1366, 1373–75 (Fed. Cir. 2019)). The patent owner may do so by
demonstrating that the objective evidence is the result of some aspect of the
claim (not already in the prior art) or the claimed combination as a whole.
Id. (citing In re Kao, 639 F.3d 1057, 1068–69 (Fed. Cir. 2011); WBIP, LLC
v. Kohler Co., 829 F.3d 1317, 1331 (Fed. Cir. 2016)).
(a) Nexus
“Whether a product is coextensive with the patented invention, and
therefore whether a presumption of nexus is appropriate in a given case, is a
question of fact.” Fox Factory, 944 F.3d at 1373.
Patent Owner contends that “[a]ll of the elements of each of the
independent claims in the ’444 [p]atent read on the SB15 pistol stabilizer
that is and has been sold by” Patent Owner. PO Resp. 50 (referencing
Ex. 2012 (Bosco13 Declaration) ¶ 53); see also Ex. 2012, Exhibit R
(providing claims charts for how the SB15 stabilizer corresponds to claims
1–14 of the ’444 patent). Patent Owner continues that the SB15 pistol
stabilizer was the basis for the Specification. PO Resp. 50.

13 Mr. Bosco is the Chief Executive Office of Patent Owner, NST Global,
LLC dba SB Tactical. Ex. 2012 ¶ 2.
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Petitioner replies that Patent Owner has not met its burden that its
objective evidence is entitled to a nexus. Reply 18–24. Petitioner argues
that any success in the SB15 pistol stabilizer is attributed to the fact that
users can (and do) shoulder the stabilizer, without the weapon being
characterized as a short-barreled rifle. Id. at 19–21, 23–24; see, e.g.,
Ex. 2012, 114 (indicating that pistol braces “have become popular
replacements for standard AR-15 stock systems for reasons having nothing
to do with their intended purpose”). Petitioner explains that, initially, the
U.S. Bureau of Alcohol, Tobacco, Firearms and Explosives (“BATFE”)
concluded, in 2015, that an AR15 pistol fitted with a stabilizer was classified
as a short-barreled rifle, triggering more onerous licensing requirements.
Reply 21–22 (referencing Ex. 1017; Ex. 1015, 19:1-10). Petitioner argues
that Patent Owner “‘worked tirelessly for more than two years’ to reverse
the ruling.” Id. at 22 (referencing Ex. 1019; Ex. 1015, 39:12–15, 44:6–15).
Petitioner does not address whether Patent Owner’s commercial product is
coextensive with one or more claims of the ’444 patent.
Patent Owner replies that BATFE’s approval supports a finding of
nexus, as BATFE was trying to prevent shouldering of the weapon and the
claimed features allow the weapon to be secured to the forearm. Sur-
reply 22. Patent Owner also argues that there are other, cheaper, braces on
the market that would allow shouldering, yet Patent Owner’s products “still
dominate the market.” Id. at 22–23.
We find that Patent Owner has not met its burden of proving a nexus
between the SB15 stabilizer and the claimed invention. Patent Owner has
not demonstrated that it is entitled to a presumption of nexus. The claims of
the ’444 patent recite “a handgun” and “a support structure extending
rearwardly from the rear of the handgun.” See Ex. 1001, 5:66–6:15, 6:29–
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46, 6:54–7:3. Patent Owner has not established how many products sold
included these elements. As such, the evidence of record does not include
how many of the products sold are coextensive with claim 1. See Tr. 52:24–
53:13 (Patent Owner’s counsel stating that she does not know how many of
the units sold included a support structure or handgun, that is, how many
sales, if any, are for a product that is coextensive with the claims); cf.
Polaris Indus., Inc., 882 F.3d at 1073 (“Moreover, the Board did not point to
any limitation it found missing in the RZR vehicles.”). Mr. Bosco’s
testimony is directed to the total number of “stabilizers” sold, without
explaining persuasively that these sales include products coextensive with
claim 1. See Ex. 2012 ¶¶ 21–31.
Also, the evidence of record is replete with products that differ from
the SB15 stabilizer. See, e.g., Ex. 2012, 33–38 (referencing the SB Tactical
SBM4, SBA3, SB PDW, FS1913), 51 (stating that SB Tactical has “an
extensive catalog of brace configurations”), 75–77 (referencing the SOB47
stabilizer), 90–91 (referencing the SB Tactical Mini stabilizer). Patent
Owner fails to explain adequately if these different models of stabilizer are
configured the same as the SB15 stabilizer and how many of the sales about
which Mr. Bosco testifies are associated with the SB15 stabilizer as
compared to these other models. See Ex. 2012 ¶ 21 (claiming that over
2,000,000 units were sold covered by at least one claim of the ’444 patent,
but not providing any support for this testimony or how stabilizers other than
the SB15 satisfy a claim).
Accordingly, we find that Patent Owner has not established how
many, if any, of the products sold (as identified in Mr. Bosco’s Declaration)
are coextensive with the claimed subject matter, such that Patent Owner is
entitled to a presumption of nexus.
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As we indicate above, our analysis does not end with a finding that
Patent Owner is not entitled to a presumption of nexus—Patent Owner may
establish a nexus by demonstrating that the objective evidence is the result
of some aspect of the claim (not already in the prior art) or the claimed
combination as a whole. For the reasons below, we find that Patent Owner
has not adequately made such a showing.
As set forth above, Patent Owner has not established how many SB15
stabilizers (that is, the specific stabilizer identified in Mr. Bosco’s
Declaration) were sold with a handgun and a support structure extending
rearwardly from the rear of the handgun, which the claims of the ’444 patent
require. See Tr. 52:24–53:13 (Patent Owner’s counsel stating that she does
not know how many of the units sold included a support structure or
handgun); Ex. 1001, 5:66–6:15, 6:29–46, 6:54–7:3. Nonetheless,
considering the SB15 stabilizer used with a handgun and a support structure
extending rearwardly from the rear of the handgun, Patent Owner has not
sufficiently shown that the objective evidence of non-obviousness is the
result of some aspect of the claim (not already in the prior art) or the claimed
combination as a whole. As we found in our analysis of the Graham factors,
the prior art (Forjot) differs from the claimed invention in that it fails to
disclose a strap to secure its cuff to a user’s forearm. Patent Owner has not
demonstrated adequately that the strap limitation or the claimed combination
as a whole (including the handgun and support structure) is the reason for
the commercial success.
Significantly, we agree with Petitioner that the evidence of record
supports a finding that any commercial success is likely attributable, at least
in large part, to the ability to shoulder an AR15 pistol using Patent Owner’s
brace. Reply 18–24. That is, the objective evidence is more the result of
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some aspect of the claim that is already in the prior art, rather than a unique
feature (the strap) or the recited combination as a whole. See Lectrosonics,
Inc., IPR2018-01129, Paper 33 at 33. Industry articles in the record identify
the ability to shoulder or cheek an automatic pistol fitted with the stabilizer
as a main feature of the product. See, e.g., Ex. 2012, 29–30 (discussing
shouldering), 48 (“The reactions [to the brace] were mixed . . . . However, a
few enterprising purchasers decided not to use the SB-15 as intended, and
they promptly shouldered their brace-equipped AR pistols.”), 49 (“With the
ability of the SB-15 braced AR pistols to be shouldered, . . . the market
responded.”), 77 (“Long story short, you can shoulder your AR-15 pistol
without any issues, so shoulder away!”), 114 (“Pistol braces are awesome,
but the first thing you need to know about them is that very few people
actually use pistol braces as pistol braces.”), 119 (“You can also find most of
the popular firearms YouTubers shouldering pistol braces regularly.”), 127–
128 (discussing the impact of stabilizing braces on AR15 pistol popularity
and the use of the brace to shoulder the weapon), 157 (depicting user
shouldering weapon with brace), 167 (“Basically, if an SB Tactical pistol
stabilizing brace is attached by the end user to an AR pistol buffer tube, it
can legally be shouldered and fired without being considered [a short-
barreled rifle] under the [National Firearms Act].”); Ex. 2014, 4 (depicting
use of brace to shoulder weapon); Ex. 2005, 4 (depicting brace used to cheek
weapon).14 Forjot’s prior art cuff would provide that same capability. See,
e.g., Ex. 1008, Fig. 1 (depicting a structure, without a strap, that could be

14 Although many of these articles address SB Tactical’s stabilizing braces
generally, that is, without reference to a specific model, these articles
support a finding that the ability to shoulder the brace would span across
different models.
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shouldered, rather than attached to a forearm). That is, as we discuss above,
the differences between the claimed invention of claim 1 and the prior art is
the strap limitation.
(b) Conclusion as to secondary
considerations
Because we find that Patent Owner has not established a nexus
between its objective evidence of non-obviousness and the claimed
invention of claim 1, we find that this evidence is not entitled to substantial
weight. See In re GPAC Inc., 57 F.3d at 1580.
(6) Conclusion as to claim 1
For the reasons provided above, we conclude, on the complete record,
that Petitioner demonstrates, by a preponderance of the evidence, that claim
1 is unpatentable under 35 U.S.C. § 103(a) over Forjot and Morgan.
b) Independent claims 6 and 10
Both Petitioner and Patent Owner treat independent claims 6 and 10
the same as claim 1. See Pet. 16–21, 26; PO Resp. 23–30 (addressing
Ground 1), 41–45 (addressing Ground 3). We agree that the scope and
content of the prior art and differences between the prior art and claimed
invention for claims 6 and 10 are the same as for claim 1. For the reasons
provided above, in connection with our analysis of claim 1, we conclude, on
the complete record, that Petitioner demonstrates, by a preponderance of the
evidence, that claims 6 and 10 are unpatentable under 35 U.S.C. § 103(a)
over Forjot and Morgan.
c) Dependent claims 2, 11, and 12
Dependent claims 2, 11, and 12 require, in relevant part, that the flaps
be made of an elastomeric material. Ex. 1001, 6:16–20 (claim 2), 7:4–6
(claim 11), 7:7–10 (claim 12, which depends from claim 11). Petitioner
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argues that “it would have been obvious to use known elastomeric materials”
given Forjot’s teaching that its cuff “obtain[s] a certain elasticity” to receive
a user’s arm. Pet. 22 (referencing Ex. 1008, 2:4–5; Ex. 1002 ¶ 62).
Petitioner also argues that Morgan discloses that its forearm supports
are made of plastic. Pet. 22 (referencing Ex. 1010, 5:53; Ex. 1002 ¶ 63).
Petitioner argues that “[p]lastics having elasticity include ‘elastomeric
materials,’ and the use of elastomeric materials for forearm accessories was
well known in the art.” Id. (referencing Ex. 1002 ¶ 63; Ex. 1012). Petitioner
reasons that “[u]sing elastomeric materials instead of a metal having elastic
properties is a ‘mere substitution of one element for another known in the
field’ to ‘yield a predicable result’ and therefore obvious.” Id. at 22–23
(quoting KSR Int’l, 550 U.S. at 416). Petitioner argues that “[a]rmed with
the teaching in Forjot that the cuff has a ‘certain elasticity,’ one skilled in
the art would have been taught by Forjot and Morgan to use elastomeric
materials for the cuff of Forjot.” Id. at 26–27 (referencing Ex. 1002 ¶ 63).
Petitioner adds that “[s]uch a choice could have been motivated by the cost
or availability of materials, ease of manufacture, user comfort, or the more
resilient characteristics of elastomers versus stainless steel.” Id. at 23
(referencing Ex. 1002 ¶ 64).
Patent Owner responds that Forjot neither discloses nor suggests that
its “cuff be fabricated from an elastomeric material.” PO Resp. 32. Patent
Owner argues that Forjot discloses that its cuff is preferably made of metal.
Id. Patent Owner argues that Forjot teaches away from an elastomeric
material for its cuff. Id.
Patent Owner also argues that Morgan does not disclose a cuff made
of an elastomeric material, as Morgan’s cuff is made of a rigid plastic. PO
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Resp. 33. Patent Owner explains that the Specification of the ’444 patent
distinguishes between a rigid material and an elastomeric material. Id.
Petitioner replies that Forjot discloses a cuff made of an elastomeric
material, as Petitioner construes that term. Reply 16. Petitioner argues that,
even if Forjot’s stainless steel cuff is not an elastomeric material, such
materials were well known in the firearms art. Id. Petitioner adds that
Dr. Harrison testified that “‘[i]t’s really common’ to use elastomeric
materials in firearms.” Id. Petitioner argues that “Forjot expressly provides
a motivation to use ‘elastic’ materials.” Id.
Patent Owner replies that “[e]lastic does not mean elastomeric.” Sur-
reply 18. Patent Owner argues that Petitioner mischaracterizes
Dr. Harrison’s testimony concerning elastomeric material, which he testified
is commonly used for grips on handguns. Id. (referencing Ex. 1021, 76:13–
17).
Again, we construe the term “elastomeric material” to require the
material of the spaced flaps to be made of an elastomer. As such, we find
Forjot does not disclose a cuff made from an elastomeric material. Forjot’s
cuff is preferably made of stainless steel. Ex. 1008, 2:3–5. We also find that
Morgan does not disclose a cuff made of an elastomeric material. As Patent
Owner argues, Morgan discloses that its supports 136, 138 “are each made
of a rigid plastic.” Ex. 1010, 5:51–53 (emphasis added); PO Resp. 33. The
rigid characteristic takes Morgan’s cuff material outside the scope of an
elastomeric material, which has properties similar to natural rubber,
including the ability to return to its original shape after being stretched. See
PO Resp. 33 (explaining that “[t]he specification of the ‘444 [p]atent itself
differentiates between a rigid material and an elastomeric material”).
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We also find that Petitioner has not demonstrated, by a preponderance
of the evidence, that it would have been obvious to a person having ordinary
skill in the art to modify Forjot’s cuff to construct it of an elastomeric
material. Petitioner’s sole rationale for this modification is that, because
Forjot discloses that its cuff has a “certain elasticity,” a person having
ordinary skill in the art would have modified Forjot’s stainless steel cuff
with an elastomeric material. Pet. 22 (referencing Ex. 1002 ¶ 62). In
support of this reasoning, Mr. Nixon declares that Forjot’s teaching that its
cuff obtains a certain elasticity “alone is sufficient to suggest to one of
ordinary skill in the art to use elastomeric materials.” Ex. 1002 ¶ 62. We do
not agree.
Forjot’s disclosure as to obtaining a “certain elasticity” is directed to
the thickness of the stainless steel cuff. Ex. 1008, 2:3–5. Forjot also teaches
that a user would bend the flaps to engage the user’s forearm, forming a
clamp over the forearm. Id. at 2:25–29. Neither Petitioner nor Mr. Nixon
adequately explained how this disclosure suggests using an elastomeric
material, which has properties similar to natural rubber, instead of stainless
steel.
In support of our finding, we agree with Patent Owner and
Dr. Harrison that “[e]lastic does not mean elastomeric.” Sur-reply 18;
Ex. 2009 ¶ 40 (“Still, the terms ‘elastic’ and ‘elastomer’ refer to very
different concepts.”). Indeed, as Forjot itself teaches, a metal can have
elastic properties. Ex. 1008, 2:3–5; see also Ex. 2009 ¶ 40 (“[A] metal can
behave elastically and resiliently in a small range of deformation.”).
Although we recognize that an elastomeric material has properties similar to
natural rubber, including elasticity, we find elasticity alone insufficient to
serve as the sole basis for why a person having ordinary skill in the art
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would substitute an elastomeric material for Forjot’s stainless steel cuff, as
the evidence of record demonstrates that other materials have elastic
properties.
Petitioner’s reliance on Troncoso15 is unavailing. Petitioner states that
“[p]lastics having elasticity include ‘elastomeric materials,’ and the use of
elastomeric materials for forearm accessories was well known in the art.”
Pet. 22 (referencing Ex. 1002 ¶ 63; Ex. 1012). Mr. Nixon provides, with
reference to Troncoso, similar testimony—“the use of elastomeric materials
for forearm accessories was well known in the art.” Ex. 1002 ¶ 63.
Troncoso’s reference to elastomeric material, however, is directed to
material added to fork 32b to provide a snug fit between the barrel fork and
the barrel of a gun. Ex. 1012, 4:1–11; see also id. at Fig. 5 (depicting
elastomeric material layer 76 on tines 72, 74, of fork 32b). As such,
Troncoso’s use of elastomeric material is not directed to a forearm accessory
as Petitioner and Mr. Nixon imply. Neither Petitioner nor Mr. Nixon
adequately explained how this disclosure in Troncoso demonstrates that
using elastomeric materials for forearm accessories was well known in the
art or otherwise suggests replacing Forjot’s stainless steel with an
elastomeric material.
For the reasons above, on the complete record, we find that Petitioner
fails to demonstrate, by a preponderance of the evidence, that a person
having ordinary skill in the art would have been motivated to modify
Forjot’s stainless steel cuff by making it out of an elastomeric material.
Accordingly, Petitioner fails to demonstrate, by a preponderance of the

15 Troncoso, Jr. US 5,180,874, issued Jan. 19, 1993 (Ex. 1012).
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evidence, that claims 2, 11, and 12 are unpatentable under 35 U.S.C.
§ 103(a) over Forjot and Morgan
d) Dependent claims 3 and 13
Dependent claims 3 and 13 require, in relevant part, that the recited
passage extend entirely through the recited body. Ex. 1001, 6:21–23 (claim
3), 7:11–13 (claim 13). Petitioner contends that Forjot discloses a passage
that extends entirely through its cuff’s body. Pet. 23 (referencing Ex. 1008,
Fig. 2; annotated version of Forjot’s Fig. 1 at Pet. 18). In his Declaration,
Mr. Nixon annotates Forjot’s Figure 1 to identify the passage, which shows
dashed lines (representing tube 2 within the identified passage) extending
the length of the passage. Ex. 1002 ¶ 49; Ex. 1008, Fig. 1.
We have reviewed Petitioner’s contentions and find, on the complete
record, that Petitioner has demonstrated, by a preponderance of the evidence,
that Forjot discloses a passage that extends entirely through the upper
portion of cuff 1. See Ex. 1008, Fig. 1 (depicting a dashed line representing
tube 2 extending to the end of the upper portion of cuff 1), Fig. 2 (showing
tube 2 in phantom, such that the passage in the upper portion of cuff 1 is
shown to extend through the entire cuff); Ex. 1002 ¶ 49. Patent Owner does
not dispute these contentions in the Patent Owner Response.
Accordingly, we conclude, on the complete record, that Petitioner
demonstrates, by a preponderance of the evidence, that claims 3 and 13 are
unpatentable under 35 U.S.C. § 103(a) over Forjot and Morgan.
e) Dependent claims 4, 5, and 14
Dependent claim 4 requires the strap to encircle the flaps, and claims
5 and 14 require the strap to encircle the flaps and passage. Ex. 1001, 6:24–
27 (claims 4 and 5), 7:14–16 (claim 14). Petitioner contends that “[u]sing
the strap as a belt to encircle the entire cuff body including the passage and
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cinch the ends of the straps together would be the simplest way to apply the
strap.” Pet. 23–24 (referencing Ex. 1002 ¶ 66). Petitioner also relies on the
language in the ’444 patent Specification at column 4, lines 19 to 22 to
support its position. Id.
We have reviewed Petitioner’s contentions and find, on the complete
record, that Petitioner has demonstrated, by a preponderance of the evidence,
that encircling the entire cuff represents a simple implementation of a strap,
and that such a configuration would satisfy the additional limitations of
claims 4, 5, and 14. See Ex. 1002 ¶ 66. We credit Mr. Nixon’s testimony
that a person having ordinary skill in the art would appreciate how to use a
strap. We base our crediting of this testimony, in part, on the relatively high
level of ordinary skill in the art. See also Ex. 1011, Fig. 1 (depicting straps
going entirely around Deckard’s device and the user’s forearm). Patent
Owner does not dispute these contentions in the Patent Owner Response.
Accordingly, we conclude, on the complete record, that Petitioner
demonstrates, by a preponderance of the evidence, that claims 3 and 13 are
unpatentable under 35 U.S.C. § 103(a) over Forjot and Morgan.
f) Dependent claims 7 and 8
Dependent claim 7 requires the recited support structure of claim 6 be
a buffer tube, and claim 8 requires the support structure to be something
other than a buffer tube. Ex. 1001, 6:47–50. In the Petition, Petitioner
contends that Forjot’s tube 2 corresponds to the recited buffer tube. Pet. 24.
Petitioner contends, with respect to claim 8, “[t]here are hundreds if not
thousands of ways to provide a support structure on a firearm that is ‘other
than a buffer tube.’” Id. (referencing Ex. 1002 ¶ 68; Ex. 1009, 2:20;
Ex. 1010, 4:25; Ex. 1011, 1:61). Petitioner argues that it would have been
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“obvious to choose any of these known structures according to their intended
use.” Id. (referencing Ex. 1002 ¶ 68).
Patent Owner responds that “[n]o tube that is unrelated to the . . . bolt
return function [of the handgun] can be properly understood to be a ‘buffer
tube.’” PO Resp. 37 (referencing Ex. 2009 ¶ 48; and relying on Patent
Owner’s proposed construction of the term “buffer tube”). Patent Owner
argues that Forjot’s tube 2 is not a buffer tube as that term is properly
construed. Id.
Petitioner replies that, under its proposed construction, Forjot’s tube 2
corresponds to the recited buffer tube. Reply 16. Petitioner adds that, even
under Patent Owner’s construction, “attaching Forjot’s stabilizing member
to an AR-15 pistol buffer tube would be obvious.” Id. (referencing Ex. 1022
¶ 9). Petitioner reasons that “AR-15 pistols with buffer tubes . . . were
known prior to the invention.” Id. Petitioner adds that “Patent Owner’s
expert testified it was well-known to attach stocks to AR-15 buffer tubes.”
Id. (referencing Ex. 1021, 78:20–25 (“It is definitely true that buffer tubes --
that stocks were attached to buffer tubes in 2012, and that was well known,
and in that regard the buffer tube supported the stock, yes.”)). Petitioner
concludes that “[i]t would have been obvious to use the stabilizer of Forjot
with an AR-15 pistol since Forjot discloses attaching a stabilizing cuff to the
same structure, i.e., a cylindrical lower receiver extension from the rear of a
handgun, and suggests applying its invention to ‘land-based weapons.’” Id.
at 16–17 (referencing Ex. 1022 ¶ 9). Mr. Nixon testifies that Forjot’s
statement that its invention can be applied to land-based weapons provides a
motivation for the modification. Ex. 1022 ¶ 9.
Patent Owner does not address Petitioner’s obviousness position
presented, for the first time, in the Reply in response to Patent Owner’s
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construction. See Sur-reply 18 (addressing Petitioner’s construction of
“buffer tube”).
With respect to claim 7, Petitioner states “Forjot also uses ‘tube 2’ as
the support structure and therefore discloses this limitation.” Pet. 24
(referencing Ex. 1002 ¶ 67). Mr. Nixon provides the exact same statement,
without further explanation, in his Declaration. See Ex. 1002 ¶ 67. That is,
this statement is the sole support for Petitioner’s position. Neither the
Petition nor Mr. Nixon provides a construction of the term “buffer tube” or
explains how Forjot’s tube 2 corresponds to a buffer tube. See Pet. 24;
Ex. 1002 ¶ 67; cf. 37 C.F.R. § 42.104(b)(3) (requiring, in a petition, a
statement of “[h]ow the challenged claim is to be construed”); Ex. 2011,
16:15–17 (Mr. Nixon answering “[n]o,” when asked if, “[i]n a firearm would
all tubular members be referred to as buffer tubes”). As we state above, we
construe the term “buffer tube” to mean “a cylindrical lower receiver
extension that houses the buffer assembly of a firearm.” As such, Petitioner
fails to demonstrate, by a preponderance of the evidence, that Forjot
discloses a buffer tube.
We do not consider Petitioner’s new obviousness theory presented, for
the first time, in the Reply. A petitioner may not bolster its original case-in-
chief with new theories and evidence in its reply brief. To do so would
violate 37 C.F.R. § 42.23(b), which forbids the introduction of new
arguments on reply. See Intelligent Bio-Sys., Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (“It is of the utmost importance
that petitioners in the IPR proceedings adhere to the requirement that the
initial petition identify ‘with particularity’ the ‘evidence that supports the
grounds for the challenge to each claim.’”). Here, Petitioner chose not to
offer a construction of “buffer tube” in the Petition, and did not provide any
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explanation as to why tube 2 constituted the recited “buffer tube.” Petitioner
cannot properly shift its claim construction obligation on to Patent Owner,
then present an entirely new obviousness theory based on that construction.
See Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324, 1330–31 (Fed.
Cir. 2019) (“[A]n IPR petitioner may not raise in reply “an entirely new
rationale” for why a claim would have been obvious.”).
Accordingly, we conclude, on the complete record, that Petitioner
fails to demonstrate, by a preponderance of the evidence, that claim 7 is
unpatentable under 35 U.S.C. § 103(a) over Forjot and Morgan.
We also conclude, on the complete record, that claim 8 is
unpatentable under 35 U.S.C. § 103(a) over Forjot and Morgan. As we
discuss above, based on our construction of “buffer tube,” we find that
Forjot’s tube 2 is not a buffer tube and, as such, satisfies the subject matter
of claim 8—a support structure other than a buffer tube. Accord Ex. 2009
¶ 48 (“[O]ne of ordinary skill in the art would recognize that the tube 2
disclosed by Forjot is not a ‘buffer tube’ because it is unrelated to any bolt
return function, and does not have any buffer components inside of it.”); cf.
Dec. on Inst. 26 (putting the parties on notice by stating “that we read claims
7 and 8 to require the support structure to be either a buffer tube or not. As
such, to the extent that evidence during trial supports a finding that Forjot’s
tube 2 is not a buffer tube, that evidence would seem to equally support a
finding that tube 2 satisfies the requirement of claim 8”). Patent Owner does
not address claim 8 in the Patent Owner Response.
g) Dependent claim 9
Claim 9 depends from claim 6 and additionally recites a “bracket
secured to said handgun and said support structure secured to said bracket.”
Ex. 1001, 6:51–53. Petitioner contends that Forjot discloses that tube 2 is
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attached to butt 5 by any known means, either with or without a joint.
Pet. 25. Petitioner argues that “[b]rackets and joints have been used for
centuries to mechanically connect parts of firearms together. It would have
been obvious to substitute a bracket for a joint to hold tube 2 in Forjot.” Id.
(referencing Ex. 1002 ¶ 69). Petitioner continues that “[t]his is the
substitution of one known element for another according to its known
function and is obvious.” Id. at 25 (referencing Ex. 1002 ¶ 69).
We find, on the complete record, that Petitioner demonstrates, by a
preponderance of the evidence, that a person having ordinary skill in the art
would have modified Forjot’s apparatus to include a bracket to hold tube 2.
Mr. Nixon’s unrebutted testimony provides that “a bracket is a type of
joint.” Ex. 1002 ¶ 69. Mr. Nixon adds that “brackets and joints have been
used for centuries to mechanically connect parts of firearms.” Id. Neither
Patent Owner nor Dr. Harrison addressed Petitioner’s position or
Mr. Nixon’s testimony.
Accordingly, we conclude, on the complete record, that Petitioner
demonstrates, by a preponderance of the evidence, that claim 9 is
unpatentable under 35 U.S.C. § 103(a) over Forjot and Morgan.
E. Grounds 1, 2, and 4: Claims 1–14 as Allegedly Obvious Over
Forjot alone, or Forjot in combination with and Baricos or Deckard
Petitioner contends that Forjot, alone (Ground 1) or Forjot in
combination with Baricos or Deckard (Grounds 2 and 4), renders obvious
the subject matter of independent claims 1, 6, and 10 and dependent claims
2–5, 7–9, and 11–14. Pet. 16–26, 27–28.
Because we conclude that Petitioner demonstrates, by a
preponderance of the evidence, that independent claims 1, 6, and 10, and
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dependent claims 3–5, 8, 9, 13, and 14 are obvious over Forjot and Morgan,
we need not address these claims for Grounds 1, 2, and 4.
With respect to claims 2, 7, 11, and 12, we address Petitioner’s
contentions with respect to Grounds 1 and 3 above, in connection with our
analysis of these claims for Ground 3. Petitioner does not provide any
additional contentions with respect to these claims for Grounds 2 and 4. See
Pet. 25–26, 27–28. Accordingly, we conclude that Petitioner fails to
demonstrate, by a preponderance of the evidence, that claims 2, 7, 11, and
12 are unpatentable under 35 U.S.C. § 103(a) over Forjot alone, or over the
combinations of Forjot and Baricos or Forjot and Deckard.

III. PETITIONER’S MOTIONS TO EXCLUDE EVIDENCE
Petitioner files two motions to exclude evidence. Papers 36, 37. We
address each motion in turn, below.
A. Petitioner’s Motion to Exclude Certain Exhibits
Petitioner moves to exclude certain exhibits, each of which “has been
relied on by Patent Owner to show that secondary considerations of non-
obviousness support a finding that the claimed invention is patentable.”
Paper 37, 1 (listing Exhibits 2003–2005; Exhibit 2012, Exs. C-P; Exhibit
2013, Exs. A-D; Exhibit 2014, Ex. A; Exhibit 2015, Ex. A; and Exhibit
2016, Ex. A). Because we do not give substantial weight to Patent Owner’s
objective evidence of non-obviousness, we dismiss this motion as moot.
B. Petitioner’s Motion to Exclude Dr. Harrison’s Declaration
Petitioner seeks to exclude Dr. Harrison’s direct testimony because
“Dr. Harrison is not an expert in firearms and did not use reliable principles
and methods when preparing his opinions.” Paper 36, 1. Petitioner argues
that Dr. Harrison “has no technical experience to draw from to offer expert
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testimony that could assist the Board.” Id. For the reasons discussed below,
we disagree, and we deny Petitioner’s motion.
First, Petitioner argues that allowing Dr. Harrison to testify “opens the
doors for other full-time patent attorneys to hold themselves out as experts.”
Paper 36, 2–3. Petitioner argues that “admitting such testimony ‘serves only
to cause mischief and confuse the factfinder.’” Id. at 3 (quoting Sundance,
Inc. v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1362 (Fed. Cir. 2008); and
also citing Proveris Sci. Corp. v. Innovasystems, Inc., 536 F.3d 1256 (Fed.
Cir. 2008)). Petitioner adds that “allowing additional attorney argument
under the guise of expert opinion would permit a party to evade the Board’s
page limits for legal briefing.” Id.
Patent Owner responds that “Petitioner proposes a rule and misstates
law by asserting an otherwise qualified expert becomes unqualified by later
becoming a patent attorney.” Paper 40, 5. Patent Owner argues that
“Petitioner cites to case law where expert witnesses were excluded not
because they testified on the law, but because they testified regarding
invalidity and validity issues related to a field of invention to which he did
not have the requisite skill in the art.” Id. Patent Owner adds that
“Dr. Harrison has extensive experience related to the use of firearms, and he
is not simply a patent attorney testifying on a field to which he has no
experience.” Id. at 6.
Petitioner replies that “Dr. Harrison could only qualify as an
independent ‘expert’ in this proceeding if he possessed specialized
knowledge that is relevant to an issue the Board might require help
understanding.” Paper 42, 1 (citing Daubert v. Merrell Dow Pharm., Inc.,
509 U.S. 579, 590 (1993); Fed. R. Evid. 702; 37 C.F.R. § 42.62(a)).
Petitioner argues that Patent Owner “has not presented anything but general
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education and firearm shooting/instruction experience to support that
Dr. Harrison is an ‘expert’ on the subject of designing forearm braces for
pistols.” Id. Petitioner adds that “Dr. Harrison’s general training and
experience using firearms is not evidence that he has technical knowledge
relevant to an issue in this case.” Id. at 2.
We are not persuaded by Petitioner that Dr. Harrison’s testimony
should be excluded under Rule 702. Rule 702 serves “a ‘gatekeeping role,’
the objective of which is to ensure that expert testimony admitted into
evidence is both reliable and relevant.” Sundance, 550 F.3d at 1360; see
Daubert, 509 U.S. at 593 (“The initial question of whether expert testimony
is sufficiently reliable is to be determined by the court, as part of its
gatekeeper function.”). The policy considerations for excluding expert
testimony, such as those implemented by the gatekeeping framework
established by the Supreme Court in Daubert, however, are less compelling
in bench proceedings such as inter partes reviews than in jury trials because,
unlike a lay jury, the Board by statutory definition has competent scientific
ability (35 U.S.C. § 6) and has significant experience in evaluating expert
testimony. See Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc.,
IPR2015-00249, Paper 76 at 23 (PTAB June 2, 2016). Accordingly, the
danger of prejudice in this proceeding is considerably lower than in a
conventional district court trial in front of a lay jury.
As an initial matter, to the extent that Petitioner argues that a patent
attorney can never be a technical expert, the law does not support such a per
se rule. Also, the risks of causing “mischief and confus[ing] the factfinder”
are greatly reduced given the nature of the Board. Cf. Sundance, 550 F.3d at
1362. Also, based on our review of Dr. Harrison’s Declaration, we do not
find that it amounts to attorney argument, such that it constitutes additional
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briefing by Patent Owner. The mere fact that an expert is also an attorney
does not convert that expert’s testimony into attorney argument.
We also find Petitioner’s reliance on Sundance and Proveris Scientific
unpersuasive. As Patent Owner argues, the experts in each of these cases
were found to have no experience in the relevant field. Sundance, Inc., 550
F.3d at 1361–1362; Proveris Scientific Corp., 536 F.3d at 1256. We agree
with Patent Owner that Dr. Harrison has sufficient experience in the field of
firearms to help the Board “to understand the evidence or to determine a fact
in issue.” See Fed. R. Evid. 702(a); Paper 40, 4; see also Ex. 2009 ¶ 7 (“I
earned the Masters of Science and the Ph.D. degrees in mechanical
engineering from the University of California, San Diego . . . .”), ¶ 5 (“I am
presently certified by the California Dept. of Justice as a firearms safety
instructor, and presently certified by the National Rifle Association as a
pistol instructor, and am presently licensed to carry a concealed handgun in
the State of California.”); Ex. 2002 (providing curriculum vitae, including
military training and experience).
Indeed, as we find, a person having ordinary skill in the art would
have a bachelor’s degree in mechanical (or similar type of) engineering and
2 to 3 years of experience in handgun use, procurement, repair, design, or
manufacturing. Dr. Harrison has a Ph.D. in mechanical engineering.
Ex. 2009 ¶ 7. Further, our definition (as initially provided by Petitioner)
requires experience in handgun use, procurement, repair, design, or
manufacturing. Dr. Harrison has served 23 years in the military, and has
owned and used firearms for over 40 years. Id. ¶¶ 3–4. He is a certified
firearms instructor. Id. ¶ 5. These facts support a finding that he is a person
of at least ordinary skill, if not extraordinary skill, as we have defined the
level of ordinary skill in the art, at least as to firearms use.
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Petitioner focuses on Dr. Harrison’s lack of experience in design of
handguns or forearm support systems. Paper 36, 5. But such experience is
not required to serve as an expert, or even to qualify as a person of ordinary
skill in the art of the ’444 patent. Cf. Flex-Rest, LLC v. Steelcase, Inc., 455
F.3d 1351, 1360–61 (Fed. Cir. 2006) (determining that a district court did
not abuse its discretion for excluding an expert with no keyboard design
experience in a case where the court expressly found that a skilled artisan
was a keyboard designer). Instead, the consideration is whether
Dr. Harrison is “qualified in the pertinent art” so as to help the Board
understand the evidence and reach factual findings. See Sundance, Inc., 550
F.3d at 1363–64; Consolidated Trial Practice Guide 34 (Nov. 21, 2019)
(“CTPG”)16 (stating that an expert’s testimony is not precluded as long as
the testimony “is helpful to the Board,” and “the expert’s experience
provides sufficient qualification in the pertinent art”); cf. Mytee Prods., Inc.
v. Harris Research, Inc., 439 F. App’x 882, 886–87 (Fed. Cir. 2011) (non-
precedential) (upholding admission of the testimony of an expert who “had
experience relevant to the field of the invention,” despite admission that he
was not a person of ordinary skill in the art). We find that Dr. Harrison is
sufficiently qualified in the firearms arts to assist this panel. See CTPG 34
(“There is, however, no requirement of a perfect match between the expert’s
experience and the relevant field.” (citing SEB S.A. v. Montgomery Ward &
Co., 594 F.3d 1360, 1373 (Fed. Cir. 2010)).
Next, Petitioner argues that we should exclude Dr. Harrison’s
Declaration because certain of his opinions “attack[] Petitioner’s expert’s

16 Available at
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf.
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opinion on legal grounds.” Paper 36, 7; see also id. at 7–8 (providing
examples). Patent Owner responds that “[t]o the extent the Board finds
particular assertions of Dr. Harrison to be impermissible legal conclusions,
the Board is ‘capable of discerning from the testimony, and the evidence
presented, whether the witness’ testimony should be entitled to any weight,
either as a whole or with regard to specific issues.’” Paper 40, 6 (quoting
Daiichi Sankyo Co., Ltd. v. Alethia Biotherapeutics, Inc., IPR2015-00291,
Paper 75 at 24 (PTAB June 14, 2016)).
We agree with Patent Owner—the Board is capable of disregarding
any testimony that goes to matters of the law, rather than technical
considerations.
Petitioner’s additional concerns are also unavailing. Petitioner argues
that Dr. Harrison admitted in his deposition that certain declaration
statements were wrong (Paper 36, 9–10); Dr. Harrison’s obviousness
analysis is contrary to the law (Paper 36, 10–11); Dr. Harrison lacks
knowledge about how a person having ordinary skill in the art would
understand the term “buffer tube” (Paper 36, 11); Dr. Harrison’s testimony
adds structural limitations to the claim (Paper 36, 11–12); and Dr. Harrison’s
opinions on secondary considerations lack proper foundation (Paper 36, 12–
13). Patent Owner responds, in part, that these concerns go to the weight of
testimony, not its admissibility. See Paper 40, 7, 11, 13.
We agree with Patent Owner that these concerns go to the weight of
the testimony, not its admissibility. We have taken into account all of the
facts and circumstances, including the underlying bases for Dr. Harrison’s
testimony and his cross-examination deposition, in weighing his testimony
and arriving at our findings and conclusions in this Final Written Decision.
Indeed, “[v]igorous cross-examination [and] presentation of contrary
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evidence . . . are the traditional and appropriate means of attacking shaky but
admissible evidence,” (Daubert, 509 U.S. at 595), not a motion to exclude
the evidence.

IV. CONCLUSION
After considering all the evidence and arguments in the complete
record, we conclude that Petitioner demonstrates, by a preponderance of the
evidence, that independent claims 1, 6, and 10, and dependent claims 3–5, 8,
9, 13, and 14 are unpatentable over Forjot and Morgan.17 We also conclude
that Petitioner fails to demonstrate, by a preponderance of the evidence, that
claims 2, 7, 11, and 12 are unpatentable, for any asserted ground.

17 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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In summary:

V. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that, claims 1, 3–6, 8–10, 13, 14 are shown to be
unpatentable under 35 U.S.C. § 103(a) over Forjot and Morgan;
ORDERED that, claims 2, 7, 11, and 12 are not shown to be
unpatentable under 35 U.S.C. § 103(a) over Forjot alone, or over the
combination of Forjot with Baricos, Morgan, or Deckard; and
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

18 We did not reach a conclusion as to claims 1, 3–6, 8–10, 13, and 14 for the
grounds based on Forjot alone, or Forjot in combination with Baricos or
Deckard.
Claims18

35 U.S.C. § References Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–14 103(a) Forjot,
Morgan
1, 3–6, 8–10,
13, 14
2, 7, 11, 12
1–14 103(a) Forjot 2, 7, 11, 12
1–14 103(a) Forjot,
Baricos
2, 7, 11, 12
1–14 103(a) Forjot,
Deckard
2, 7, 11, 12
Overall
Outcome
1, 3–6, 8–10,
13, 14
2, 7, 11, 12
IPR2020-00423
Patent 8,869,444 B2
68
FOR PETITIONER:
Christopher S. Schultz
Eric G. J. Kaviar
Joseph M. Maraia
BURNS & LEVINSON LLP
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ekaviar@burnslev.com
jmaraia@burnslev.com

FOR PATENT OWNER:
Brittany J. Maxey-Fisher
William R. Brees (admitted pro hac vice)
MAXEY-FISHER, PLLC
bmaxeyfisher@maxeyfisher.com
wbrees@maxeyfisher.com