PTAB

IPR2018-01365

Special Tactical Services, LLC. v. Hagedorn, Mark

Log In

1. Case Identification

2. Patent Overview

  • Title: Mounting Assembly for a Firearm
  • Brief Description: The ’561 patent describes a non-recoil reducing mounting assembly for a firearm, also referred to as a "hard mount" or "bufferless mount." The assembly comprises a cradle configured to receive a firearm, a carriage to which the cradle is pivotably coupled, and a pintle that rotatably couples the carriage to a support structure.

3. Grounds for Unpatentability

Ground 1: Claims 1-18 are obvious over TM MK 64 in view of TM MK 93.

  • Prior Art Relied Upon: TM MK 64 (a 2005 technical manual for the MK 64 machine gun mount) and TM MK 93 (a 1999 technical manual for the MK 93 machine gun mount).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that the combination of TM MK 64 and TM MK 93 teaches every limitation of the challenged claims, including those the Examiner relied upon for allowance during prosecution. The petition argued that the asserted prior art, which was not before the Examiner, discloses the core components of the claimed invention.
      • Independent Claim 1: Petitioner argued that TM MK 64 and TM MK 93 collectively disclose a mounting assembly with all the key elements of claim 1. TM MK 64 was cited for teaching a carriage configured to mount a weapon shield and a cradle assembly. Both manuals were cited for disclosing a pintle that allows the carriage to rotate on a support structure. The petition contended that the specific sub-components of the cradle—including a planar adaptor plate, a pintle block secured to the plate, a pintle socket extending through the block, a pintle bushing, a pin bore, and a quick-release pin for retaining an adaptor pintle—are all conventional features of military gun mounts explicitly shown or suggested by the combination of TM MK 64 and TM MK 93.
      • Independent Claim 12: This claim adds limitations for a "bufferless cradle" with rearwardly swept struts, a gusset, a canted cross member, and support bosses. Petitioner argued these are not novel features but are instead standard structural and support elements disclosed in the prior art manuals. For example, TM MK 64 was shown to have rearwardly swept struts and support bosses, while TM MK 93 was cited for its robust structural members, making the combination of these features a predictable design choice.
      • Independent Claim 16: This claim, which recites the mounting assembly "consisting of" certain elements, adds a complete shield assembly and specific arrangements of spaced-apart legs and a block. Petitioner asserted that these limitations are fully met by the combination. Both prior art manuals explicitly contemplate the use of their mounts with weapon shields, and the structural elements like spaced legs and blocks were argued to be present in the prior art designs for providing stability and mounting points.
      • Dependent Claims: The petition systematically argued that the additional limitations of the dependent claims are also obvious over the combined teachings of TM MK 64 and TM MK 93. These features—such as stow pins (claim 4), ammunition container mounts (claim 5), specific dimensions (claims 10, 15, 18), and mounting a MK-19 grenade launcher (claim 11)—were characterized as well-known, conventional options in the field of military gun mounts that a person of ordinary skill in the art (POSA) would have found obvious to incorporate.
    • Motivation to Combine: A POSA would combine the teachings of TM MK 64 and TM MK 93 because both references are from the identical field of military machine gun mounts. They address the same technical challenges of providing a stable, versatile platform for mounting firearms, shields, and accessories. Petitioner argued that combining the features from these highly analogous systems to achieve an improved or customized mount would have been a matter of routine design and common sense for a POSA.
    • Expectation of Success: A POSA would have had a high expectation of success in combining the references. The petition contended that the combination involves the integration of known, simple mechanical components from similar systems (e.g., carriages, cradles, pintles, and locking pins) where the results of the combination would have been entirely predictable.
    • Key Aspects: A central point of the petition was that the asserted prior art was not considered during the original prosecution. Petitioner argued that the combination of TM MK 64 and TM MK 93 directly teaches the very limitations that the Examiner identified in the Notice of Allowance as being absent from the prior art of record.

4. Key Claim Construction Positions

  • "Carriage": Petitioner proposed construing this term as "a component of a mounting assembly that is configured to mount a shield assembly." This broad construction was argued to be consistent with the specification and was important for mapping the element onto the prior art mounts, which include structures for attaching weapon shields.
  • "Cradle": Petitioner proposed construing this term as "a component of the mounting assembly that is configured to receive a firearm." This functional, broad interpretation was used to encompass the firearm-holding structures shown in the TM MK 64 and TM MK 93 manuals.
  • Pintle Retention System ("Pintle Block," "Pintle Socket," "Pintle Bushing"): Petitioner argued that these terms, recited as separate elements in the claims, collectively describe a standard, non-novel pintle retention system. The proposed constructions defined them according to their well-understood functions in firearm mounts, where a block on the cradle’s adaptor plate houses a socket and bushing to receive and secure an accessory or secondary firearm via a pintle, a configuration shown in the prior art.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-18 of Patent 9,739,561 as unpatentable under 35 U.S.C. §103.