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Liberty Ammunition, Inc. v. United States

United States Court of Appeals, Federal Circuit

August 26, 2016

LIBERTY AMMUNITION, INC., Plaintiff- Cross-Appellant
v.
UNITED STATES, Defendant-Appellant

         Appeals from the United States Court of Federal Claims in No. 1:11-cv-00084-CFL, Judge Charles F. Lettow.

          Stephen B. Judlowe, McElroy Deutsch Mulvaney & Carpenter, LLP, New York, NY, argued for plaintiff-cross-appellant. Also represented by RlADH QUADIR; JOSEPH P. La Sala, Michael Rato, Morristown, NJ; Daniel F. Corrigan, Lawrence E. Bathgate II, Bathgate, Wegener & Wolf P.C., Lakewood, NJ.

          Walter Wayne Brown, Commercial Litigation Branch, Civil Division, United States Department of Justice, Washington, DC, argued for defendant-appellant. Also represented by BENJAMIN C. MlZER, John J. FARGO, Conrad Joseph DeWitte, Jr.

          Before Prost, Chief Judge, NEWMAN, and Stoll, Circuit Judges.

          OPINION

          STOLL CIRCUIT JUDGE.

         The United States appeals the decision of the Court of Federal Claims that ammunition rounds used by the United States Army embody the claims of Liberty Ammunition, Inc.'s U.S. Patent No. 7, 748, 325 without authorization, violating 28 U.S.C. § 1498. The Government argues that the trial court erred in construing several claim terms and that, when these terms are construed correctly, the Army rounds do not embody the claimed invention. We agree with the Government that the trial court erred in two of its claim constructions because those constructions are unsupported by the intrinsic record. Because Liberty cannot prevail under the proper claim constructions, we reverse the decision of the trial court and hold that the Government does not practice the asserted claims of Liberty's patent in violation of § 1498.

         Liberty cross-appeals the trial court's disposal of its breach of contract claim based on a non-disclosure agreement ("NDA") signed by the named inventor of the '325 patent and an Army official. The trial court denied this claim, holding that no enforceable contract ever formed between the parties. We affirm because we find no clear error in the trial court's factual determination that the Army official did not have authority to enter into an NDA on behalf of the Government.

         Background

         I. The '325 Patent

         Liberty is the assignee of the '325 patent, issued July 6, 2010, and "directed to a projectile structured to be discharged from a firearm and designed to overcome the disadvantages and problems associated with conventional firearm projectiles such as, but not limited to lead or steel jacketed projectiles." '325 patent col. 2 ll.. 34-38.

         The '325 patent grew out of the U.S. military's "Green Ammunition Program, " or "Green Bullet" initiative, of the 1990s through 2000s. '325 patent col. 1 ll. 15-30. This initiative developed in response to concerns that lead-based ammunition was polluting military training ranges throughout the United States. The program sought to eliminate lead from military ammunition, particularly the Army standard-issue 5.56 mm round, [1] the M855. Around the same time as the Green Bullet initiative, the Army began receiving reports from soldiers that two of its standard-issue lead-based rounds-the M855 and the M80-were not exacting the desired lethality in soft-tissue targets, such as humans or animals. Reports indicated that these bullets would cause "through-and-through" hits when striking at certain angles. Through-and-through hits are those in which a projectile completely passes through a soft-tissue target. When a projectile fails to lodge in a soft target's tissue, incapacitation of the target is compromised. The '325 patent sought to address this problem with the conventional Army rounds in addition to providing a lead-free design. Id. col. 2 ll. 12-19, col. 3 ll. 1-7, col. 5 ll. 9-30.

         Figure 1 of the '325 patent, reproduced below, illustrates a preferred embodiment of the claimed projectile.

         (IMAGE OMITTED)

         In this embodiment, an interface 18 "is disposed in interconnecting relation to both the nose portion 14 and the tail portion 16." '325 patent col. 4 ll. 63-64. The connection of nose 14 and tail 16 by the interface 18 can be fixed or removable, with either configuration allowing for separation of all three components when the projectile strikes certain targets, such as soft-tissue targets. Id. col. 5 ll. 9-30. This interface design "eliminates the use of lead and the provision of an outer jacket, " such as a traditional full metal jacket, which completely surrounds a projectile. Id. col. 2 ll. 39-40.

         The '325 patent specification describes that the invention's design "significantly reduce[s] the area of contact of the projectile body with the rifling or interior surface of the barrel of the firearm, " id. col. 2 ll. 43-45, which means there is "a reduced contact area as compared to conventional projectiles, " id. col. 1 ll. 65-66. See also id. col. 2 ll. 4-6 ("[T]he design and structuring of a proposed projectile would result in a contact area thereon which would be significantly less than a traditional jacketed lead bullet."). The reduction in contact area, the specification explains, "results in significantly reduced bore friction and heat buildup" and, thus, "barrel performance is improved during sustained fire of the firearm thereby increasing the barrel life and reducing the occurrence of fouling." Id. col. 7 ll. 6-9.

         At issue in this appeal are independent claims 1 and 32, which recite:

1. A projectile structured to be discharged from a firearm, said projectile comprising:
a body including a nose portion and a tail portion,
said body further including an interface portion disposed in interconnecting relation to said nose and tail portions, said interface portion structured to provide controlled rupturing of said interface portion responsive to said projectile striking a predetermined target,
said interface portion disposed and dimensioned to define a reduced area of contact of said body with the rifling of the firearm, said interface portion maintaining the nose portion and tail portion in synchronized rotation while being fixedly secured to one another by said interface portion whereby upon said projectile striking said predetermined target said interface portion ruptures thereby separating said nose and tail portions of said projectile.
32. A projectile structured to be discharged from a firearm, said projectile comprising:
a body including a nose portion and tail portion,
said body further including an interface portion disposed intermediate opposite ends of said body in interconnecting relation to said nose and tail portions, said interface portion structured to provide controlled rupturing of said interface portion responsive to said projectile striking a predetermined target, said interface portion maintaining said nose portion and tail portion in synchronized rotation while being fixedly secured to one another by said interface portion whereby upon said projectile striking said predetermined target said interface portion ruptures thereby separating said nose and tail portions of the projectile; and
said exterior surface of said interface portion disposed and structured to define a primary area of contact of said body with an interior barrel surface of said firearm.

Id. col. 7 1. 57 - col. 8 1. 5, col. 9 1. 55 - col. 10 1. 16 (disputed claim terms italicized).

         II. Liberty Discussions with the Army

         PJ Marx, named inventor of the '325 patent, met with various Army personnel to demonstrate ammunition he had developed related to the projectile claimed by the '325 patent. One such meeting occurred at Fort Benning on February 17, 2005, between Mr. Marx and Lieutenant Colonel Glenn Dean, [2] serving as Chief of Small Arms for the U.S. Infantry Directorate of Combat Development ("DCD"). DCD works with the Army infantry to determine its equipment needs and, in turn, works with private industry to develop and source desired equipment. Lt. Col. Dean, as Chief of Small Arms at DCD, developed requirements for arms acquisitions, including ammunition. As part of his role in developing suitable acquisition requirements, he met with industry representatives, like Mr. Marx, to see what they had available to sell and to keep apprised of new technology under development.

         Mr. Marx and Lt. Col. Dean signed an NDA before discussing Mr. Marx's ammunition. After the agreement had been signed, Mr. Marx discussed his "EPIC" projectile prototype, which the parties agree is similar to the projectile claimed by the '325 patent. Mr. Marx left fifty loaded EPIC rounds and one standalone EPIC projectile with Lt. Col. Dean at the conclusion of their meeting at Ft. Benning. Ultimately, the Army tested ten of those rounds in non-standard weapons with poor results. Mr. Marx, disappointed that the Army conducted tests using non-standard weaponry, requested that the Army return the remaining rounds, after which substantive communication between him and DCD, including Lt. Col. Dean, ceased.

         III. The Present Suit

         In February 2011, Liberty sued the Government. Liberty first claimed that the Army's use of the M855A1 5.56 mm (.223 caliber) and M80A1 7.62 mm (.308 caliber) rounds, which respectively succeeded the M855 and M80 rounds, practiced claims of the '325 patent without a license from Liberty in violation of 28 U.S.C. § 1498.[3] Liberty also claimed that the Army's use of the M855A1 and M80A1 rounds breached various contracts the Army entered into with Mr. Marx, including the NDA discussed above between Mr. Marx and Lt. Col. Dean.

         The trial court conducted a Markman hearing and issued a claim construction order construing fifteen disputed claim terms. Liberty Ammunition, LLC v. United States, 111 Fed. CI. 365 (2013). Relevant here, the trial court construed the claim 1 term "reduced area of contact" to mean "the area of contact between the interface and the rifling of the firearm is less than that of a traditional jacketed lead bullet of calibers .17 through .50 BMG, " id. at 375; and the claim 32 term "intermediate opposite ends" to mean that "the interface is positioned between or in the middle of the opposite ends of the forward end of the nose portion and the trailing end of the tail portion, " id. at 380.

         After holding a bench trial, the trial court issued an opinion finding that the Government practiced independent claims 1 and 32, claims 2-3, 7-11, 18-20, 22, 25, 28-31, which depend from claim 1, and claims 38-41, which depend from claim 32. Liberty Ammunition, Inc. v. United States, 119 Fed. CI. 368, 390, 392 (2014) (Trial Ct. Op.). The trial court also found all asserted claims valid over the prior art raised by the Government and it entered a damages award in Liberty's favor. Id. at 392-98, 406. The trial court found against Liberty on its breach of contract claims, holding ...


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