DCT

8:25-cv-01408

B&T USA LLC v. Surefire LLC

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 8:25-cv-01408, M.D. Fla., 11/17/2025
  • Venue Allegations: Plaintiff B&T USA resides in the district, Defendant transacts business in the district, and a substantial part of the events giving rise to the claims allegedly occurred in the district.
  • Core Dispute: Plaintiffs seek a declaratory judgment that their firearm suppressor mounting systems do not infringe Defendant’s patents and that those patents are invalid and unenforceable, following Defendant's accusations of infringement.
  • Technical Context: The technology concerns quick-detach mounting systems for firearm sound suppressors, a critical component for tactical, law enforcement, and civilian firearms applications.
  • Key Procedural History: The complaint alleges that Defendant accused Plaintiffs of infringement despite a prior agreement not to assert U.S. Patent No. 7,676,976. For U.S. Patent No. 8,459,406, the complaint notes that the USPTO has granted an Ex Parte Reexamination, finding "substantial new questions of patentability" affecting an asserted claim. The complaint further alleges that the '976 Patent is unenforceable due to inequitable conduct arising from Defendant's alleged failure to disclose Plaintiffs' pre-existing "Rotex System" as prior art to the USPTO during prosecution.

Case Timeline

Date Event
2002-08-13 B&T alleges first 15 units of "Rotex-II" suppressors exported to the U.S.
2003-11-06 Priority date of U.S. Patent No. 7,676,976
2005-06-29 Application filed for U.S. Patent No. 7,676,976
2005-09-27 U.S. Patent No. 6,948,415 (parent of '976 Patent) issues
2006-12-13 Applicant files Information Disclosure Statement during '976 Patent prosecution
2010-03-16 U.S. Patent No. 7,676,976 issues
2012-01-12 Application filed for U.S. Patent No. 8,459,406
2013-06-11 U.S. Patent No. 8,459,406 issues
2023-Early B&T and SureFire allegedly enter into "2023 Agreement" for compatible products
2024 B&T launches Rotex-SF HUB adapter
2025-01-17 SureFire allegedly sends cease-and-desist letter to B&T customer SOLGW
2025-02-27 SureFire allegedly sends first demand letter to B&T
2025-03-20 SureFire allegedly sends second demand letter accusing B&T of infringing the '976 Patent
2025-09-25 Third party files for Ex Parte Reexamination of the '406 Patent
2025-10-21 USPTO grants Ex Parte Reexamination of the '406 Patent
2025-11-17 First Amended Declaratory Judgment Complaint filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 7,676,976 - "Systems for attaching a noise suppressor to a firearm"

The Invention Explained

  • Problem Addressed: The patent describes a need for improved systems to removably attach a noise suppressor to a firearm barrel, particularly to a pre-existing fixture like a flash suppressor, in a manner that is easy, quick, and reliable enough to withstand firing vibrations without adversely affecting accuracy (’976 Patent, col. 1:12-29).
  • The Patented Solution: The invention is an apparatus where an auxiliary device, like a suppressor, is secured using a collar and a rotatable ring. The ring has a circular opening that is eccentric to its axis of rotation. In a first "open" position, the opening is concentric with the suppressor's bore, allowing the assembly to slide over an annular ridge on a muzzle fixture (’976 Patent, col. 2:38-54; Fig. 2). By rotating the ring, the opening shifts eccentrically, causing the ring's radial wall to move behind the ridge, thereby locking the suppressor longitudinally. A separate locking device then prevents the ring from rotating back to the open position (’976 Patent, col. 2:65-col. 3:6).
  • Technical Importance: This eccentric cam-locking mechanism provides a method for rapid, tool-less attachment and detachment of firearm accessories while ensuring a secure connection (’976 Patent, col. 1:20-24).

Key Claims at a Glance

  • The complaint’s invalidity analysis focuses on Claim 1 of the ’976 Patent, which was amended via a Certificate of Correction (Compl. ¶96; ’976 Patent, Certificate of Correction). The key elements of independent Claim 1 are:
    • A fixture configured for attachment to a firearm muzzle, the fixture including an annular ridge.
    • An auxiliary device (e.g., suppressor) with a bore for receiving the fixture.
    • The device includes a collar with an outer surface that is eccentric about the bore.
    • A ring is rotatably and threadedly secured to the collar's eccentric outer surface.
    • The ring has a radial wall with a circular opening that is eccentric relative to the ring's annular wall.
    • The opening is concentric with the bore in a first rotational position to pass over the ridge.
    • The opening is eccentric to the bore in a second rotational position, causing the radial wall to block the ridge.
    • A locking device releasably locks the ring in the second position.
  • The complaint seeks a declaration of non-infringement and invalidity for all claims of the patent.

U.S. Patent No. 8,459,406 - "Mounting apparatus for firearm sound suppressor"

The Invention Explained

  • Problem Addressed: The patent background identifies issues with prior art mounting systems, including internal mounting pins that are cumbersome, prone to breakage, and subject to fouling from combustion deposits, which complicates disassembly and proper alignment (’406 Patent, col. 3:1-9).
  • The Patented Solution: The invention discloses a mounting system featuring an adapter with a frusto-conical "plug" and a longitudinal alignment "tab." This adapter body is inserted into a corresponding socket in the sound suppressor. The tab slides into a tapered slot within the socket to ensure precise rotational alignment, while the mating frusto-conical surfaces provide a secure, self-centering fit (’406 Patent, Abstract; col. 5:19-27).
  • Technical Importance: This design moves the alignment mechanism to a more robust tab-and-slot interface located at the rear of the suppressor, which may reduce fouling and improve reliability compared to earlier internal pin designs (’406 Patent, col. 16:1-4).

Key Claims at a Glance

  • The complaint’s analysis focuses on Claim 8, which is subject to an Ex Parte Reexamination (Compl. ¶¶56, 59-61). The key elements of independent Claim 8, which is directed to the adapter component, are:
    • An adapter with a body having a front portion for insertion into a suppressor socket.
    • A frusto-conical external surface at a rear portion of the body, forming a plug.
    • A tab extending longitudinally from the plug.
    • The tab is adapted to be received by a slot in the suppressor socket to provide rotational alignment.
    • A limitation requires that the receiving slot in the suppressor tapers from a maximum depth at its opening to a minimum depth within the socket.
  • The complaint seeks a declaration of non-infringement and invalidity for all claims of the patent.

III. The Accused Instrumentality

Product Identification

  • The complaint identifies the accused products as B&T’s "Accused System," which incorporates its "Rotex System" (Compl. ¶¶1, 28). Specific products mentioned include the "NOX SF muzzle device" and the "Rotex-SF HUB adapter" (Compl. ¶¶23, 28).

Functionality and Market Context

  • The complaint describes the Rotex System as a "quick-detach suppressor mount" that uses a "rotational locking method" (Compl. ¶67). It alleges that B&T developed this system in 2001 and that it was sold in the United States as early as 2002, including to the U.S. government (Compl. ¶¶66, 69-70). The complaint also alleges that in 2023, the parties entered into an agreement for B&T to manufacture suppressors compatible with SureFire's "SOCOM Fast-Attach®" line of mounting devices (Compl. ¶19). The complaint does not provide a detailed technical description of the internal mechanics of the accused products.

IV. Analysis of Infringement Allegations

As this is a complaint for declaratory judgment of non-infringement, it does not contain infringement claim charts. Instead, it presents Plaintiffs' arguments for why their products do not infringe the patents-in-suit.

’976 Patent Non-Infringement Allegations

  • Plaintiffs' primary argument for non-infringement of the ’976 Patent is not based on a technical mismatch with the claim language, but on legal and equitable grounds. The complaint alleges that SureFire agreed it "would never pursue any legal action against B&T or its customer(s) for any claims relating to the ['976 Patent]" (Compl. ¶79). It further argues for non-infringement on the basis that the ’976 Patent is invalid and/or unenforceable for multiple reasons, including anticipation by Plaintiffs' own prior sales of the Rotex system and inequitable conduct before the USPTO (Compl. ¶148). The complaint includes a reproduction of a Swiss export license, dated July 22, 2002, allegedly documenting the export of 15 suppressors to the United States (Compl. p. 18, Ex. 17).

’406 Patent Non-Infringement Allegations

  • Plaintiffs' argument for non-infringement of the ’406 Patent centers on claim scope defined during patent prosecution. The complaint alleges that to overcome prior art, the applicant "added the additional requirement of a combination of a flash hider and a suppressor in order to infringe" (Compl. ¶170). Citing the ongoing Ex Parte Reexamination, the complaint notes the Examiner construed Claim 8 as requiring "the suppressor and its slot to be required elements of the claimed invention" (Compl. ¶59). Based on this, Plaintiffs allege that infringement requires evidence that B&T "combines the required flash hider and suppressor," which they claim SureFire has not provided (Compl. ¶62).

Identified Points of Contention

  • Scope Questions: A central dispute for the ’406 Patent will be whether Claim 8, which is directed to an "adapter," should be construed to also require the presence of a "suppressor with a tapered slot" as an element of the claimed invention. This raises a question of whether arguments made during prosecution limit the claim's scope to the combination of the two components.
  • Technical Questions: The complaint does not provide sufficient detail for analysis of the technical operation of B&T's products. The core technical question, which remains unaddressed, is whether the accused B&T Rotex System utilizes the specific eccentric collar and rotating ring mechanism of the ’976 Patent's claims, and the specific tapered slot and tab interface of the ’406 Patent's claims.

V. Key Claim Terms for Construction

  • For the ’976 Patent: The complaint does not provide sufficient detail for analysis of specific claim terms. The dispute, as framed by Plaintiffs, centers on invalidity and contractual estoppel rather than claim construction.
  • For the ’406 Patent: The complaint highlights a dispute over the overall scope of Claim 8, rather than a single term.
    • The Term: The scope of "adapter" in Claim 8.
    • Context and Importance: Plaintiffs' non-infringement defense for the ’406 Patent appears to depend on a narrow construction where the claimed "adapter" cannot be infringed without being combined with a specific type of suppressor. Practitioners may focus on this issue because it could determine whether the sale of the adapter alone constitutes direct infringement.
    • Intrinsic Evidence for Interpretation:
      • Evidence for a Broader Interpretation: The claim's preamble recites "An adapter, comprising..." and the body of the claim lists the constituent parts of the adapter itself (’406 Patent, col. 18:7-19). The suppressor is mentioned only as the component into which the adapter's "front portion" is "configured to be inserted," which may suggest the suppressor is not part of the claimed invention but merely provides context for its intended use.
      • Evidence for a Narrower Interpretation: The complaint alleges that during prosecution, the applicant relied on features of the suppressor—specifically "the tapered structure of the slot in the suppressor"—to distinguish the invention from the prior art (Compl. ¶60). It also cites the Examiner in the ongoing reexamination, who allegedly found that "Claim 8 requires the suppressor and its slot to be required elements of the claimed invention" (Compl. ¶59). Such arguments from the prosecution history could be used to argue for a narrower claim scope under the doctrine of prosecution history estoppel.

VI. Other Allegations

  • Indirect Infringement: The complaint seeks a declaration that Plaintiffs are not liable for any induced, contributory, or other form of indirect infringement of either the ’976 Patent or the ’406 Patent (Compl. ¶¶146, 169). No specific facts supporting or refuting indirect infringement are detailed.
  • Willful Infringement: This allegation is not applicable, as the complaint is brought by the accused infringer.

VII. Analyst’s Conclusion: Key Questions for the Case

  1. Prior Art and Inequitable Conduct: A central issue will be one of validity: can Plaintiffs prove with clear and convincing evidence that their "Rotex System" was sold or publicly used in the U.S. more than one year before the ’976 Patent's priority date, thereby invalidating its claims? Relatedly, the court will have to address the enforceability of the ’976 patent in light of Plaintiffs' allegations that Defendant intentionally withheld knowledge of the Rotex system from the USPTO.
  2. Claim Scope and Estoppel: A key legal question for the ’406 Patent will be one of claim construction and prosecution history estoppel: did the patentee, in arguments made to the USPTO during original prosecution and the current reexamination, disclaim coverage for an adapter sold alone, thereby limiting the scope of Claim 8 to an infringing combination of both an adapter and a suppressor with a tapered slot?
  3. Contractual Defenses: An underlying factual question is whether an enforceable agreement or estoppel exists that bars Defendant from asserting the ’976 Patent against Plaintiffs or their customers, as the complaint alleges.