15-22 Magazine Patents and Lawsuits, etc.

[telero]

Just a few thoughts and questions I had regarding the aftermarket 15-22 magazines and the lawsuits against Plinker and Promag. After reading the two lawsuits (Smith & Wesson v. Brookshire Tool and Manufacturing Company and Smith & Wesson v. Plinker Arms) as well as the patent (Patent US8356439 - Lightweight, low cost semi-automatic rifle magazine - Google Patents) the following appear to be the claims made by the patent that were infringed. This is my paraphrased (dumbed down) version and hopefully is correct:

Claims 1-3:
1) Magazine for a firearm with a mag well with:

a) Elongated case, hollow, neck
b) Follower that fits hollow, neck
c) Slot in neck
d) Hook on follower
​

2) Neck is off center
3) Sized for .22 LR

Claims 4-7
4) Firearm with a mag well with magazine described in claims 1-3
5) The firearm/mag with a bolt catch that is moved by the follower hook
6) Mag sized for .22 LR
7) Mag neck offset from center


Lawsuit
Claims 1-3:
Selling a magazine with the features described.

Claims 4-7:
Using/marketing the magazine described with the 15-22 (firearm with a mag well)

So basically it appears that if magazine has all the features described in claims 1-3 it would be covered by the patent. But the only thing that looks like it might be unique at all is the hook on the follower, and possibly that the hook goes through a slot. To me it even seems like that is a stretch to call the hook unique since it is just a part of the follower that activates the last round bolt hold open (LRBHO). Most other magazines that activate a LRBHO that I know of are activated by the follower, even though it might not be a hook.

Since Blackdog wasn't included in these suits and the only substantial difference is that the Blackdog drums don't have a hooked follower (or slot for the hook), it seems that the lack of the hook is the reason. The result of that of course is that the Blackdog drums don't activate the LRBHO.

I know that patents are supposed to protect those that took the effort and invested in making product, but they are also supposed to help others expand on those ideas and create better things as well.

So Promag produced and extended capacity magazine and Plinker made and extended capacity magazine as well as and enclosed body, neither of which S&W has offered. I wonder how much of the S&W business is based on selling additional magazines versus how much they make on selling the actual firearms...? From the manufacturer standpoint I see the need to protect your patent, but from the consumer side I want to see more options available to me, even if it's from a third party. And with more options available it seems like that could lead to more 15-22 sales.

I'm not advocating violoating S&W's patents (although I may question the validity of some of the claims as being unique), but I am curious about some work arounds that would let Promag, Plinker, and hopefully Doomsday Tactical all have the ability to have their unique take on the 15-22 magazine in the market.

So how would one make a magazine that doesn't violate the patent. Blackdog doesn't have a hook on the follower, so that seems like one way. How about:
1) No hook

a) no bolt hold open?
b) alternate bolt hold open​

2) Original follower with no hook

a) follower with hook available as aftermarket purchase?​

3) Hook that doesn't come out through a slot in the neck

a) not a hook but a bar?
b) separate hook that is pushed up by the follower?
​

Sorry for such a long post about something that probably doesn't really matter.

 

[telero]

As a follow up to my ridiculously long post, here are the takeaway questions I was getting at:


1) Does the S&W magazine/firearm patent seem unique to you?
2) How much does the last round bolt hold open matter in an aftermarket magazine?
3) Any other ideas on how to perform LRBHO without a hook on the follower?

 

[eet]

So how would one make a magazine that doesn't violate the patent. Blackdog doesn't have a hook on the follower, so that seems like one way. How about:
1) No hook

a) no bolt hold open?
b) alternate bolt hold open​

2) Original follower with no hook

a) follower with hook available as aftermarket purchase?​

3) Hook that doesn't come out through a slot in the neck

a) not a hook but a bar?
b) separate hook that is pushed up by the follower?
​

#1 would be a good way, especially a) I suspect b) might be OK but you need to be careful of the doctrine of equivalants

#2 would likely be a problem, I suspect S&W would have something to say about offering infringing product as components

#3 is really your 1b and you might run into trouble with the DOE as mentioned.

 

[eet]

As a follow up to my ridiculously long post, here are the takeaway questions I was getting at:


1) Does the S&W magazine/firearm patent seem unique to you?
2) How much does the last round bolt hold open matter in an aftermarket magazine?
3) Any other ideas on how to perform LRBHO without a hook on the follower?

1) it may or may not seem unique but the patent office thought it was unique, fighting validity would be very expensive, promag would need to sell millions of magazines to cover that cost, financially it is probable not worth it

2) I think this is an important feature, I would likely not buy a magazine without it

3) this is the true question, but remember being different from their actual product or the pictures shown in the patent may not be good enough, many have been bitten by the DOE

ps: I am not a patent attorney, I don't even play one on TV, I do have a bit of background and experience in the patent world and I stayed in a holiday inn express last night

 

[telero]

I knew there was a concept of doctrine of equivalents (DOE), I just wasn't sure what it was called. That is actually what I was thinking of that would potentially show that the S&W patent isn't unique.

The triple test of:
Does the device?
1) Perform substantially the same function
2) In substantially the same way
3) To yield substantially the same result

Could potentially be applied to the S&W mag against just about any other magazine that has a LRBHO feature.

Does the S&W magazine:
1) Cause the bolt to hold open?
2) By raising the follower to actuate the bolt catch?
3) Leaving the bolt held open after the magazine is empty and the last shot is fired?

Not a lawyer either, but interested in how the law works. Patents are weird. I really don't understand how Apple could even attempt to patent round corners on a rectangle.

 

[eet]

DOE applies to infringement suits and not to the patentability. There are other rules/tests used by the examiner to determine patentability while the application is in process. If you pull the file wrapper on the patent (history of the application including office actions and responses between the applicants attorney and the examiner) you would likely see there is correspondance between the examiner and the applicants attorney discussing things like obviousness. This "prosecution history" plays into the use of DOE during an infringement suit. It is rare that a patent application is approved without at least one office action that contains rejections of certain claims, I've only had it happen to me once.

Patentability has already been proven by the applicants attorney. Validity can be challenged in an infringement suit but it is a hard fought and extremely expensive ($.5 to 1MM, at least).

A work around is the answer here but still could end up in an infringement suit where the patent owner claims DOE. Knowing the history (file wrapper) can help avoid your chance of getting hit with DOE.

 

[UncaGrunny]

Considering some the the patents awarded recently, I'm beginning to think one could patent a ham sandwich today so long as they represented it as a method of carbon sequestration within living bodies, rather than a food.

 

[DOOMSDAY TACTICAL]

I've spent some time reviewing the patent and lawsuits against the 2 companies. My designs utilize a the follower with a hook and slot in neck. Good thing I did not come out with the mags then, I would be in this same situation. I've sent multiple emails to S&W and they have not responded. I'll be working on a new design to address the LRBHO issue. Thanks for putting this information up Telero.

 

[mn_doggie]

Perhap a tab on the follower that activates a mechanism built on the magazine shell that activates the LRHO.....

LRHO is necessary in my opinion. I have firearms with and without. If it weren't for the sentimental value of the "have nots" they would have hit the road long ago.

 

[arizona98tj]

The way I see it, it is a .22LR rifle....not likely to be taken onto the battlefield any time soon. Is the LRHO that important?

That being said, if you empty a full magazine of .22LR on a threat and it hasn't stopped the threat, quickly loading another magazine when you notice the bolt locked back is pretty stupid. Best to get the heck out of Dodge and implement plan B since your plan A was a complete failure.

I commend DT for the work he has done. The lack of a LRHO feature would not stop me from purchasing his product.

 

[Majorlk]

Obviously you don't shoot a lot of multi-stage matches.

 

[Zax]

I would say LRHO is important, however, I would still buy a high cap magazine without it (I already have the BD drum).

Their patent is understandable but I would like to see them license it to third parties that have a unique product they don't plan to offer directly. That seems like a sensible business decision to me but maybe not worth the effort from S&W's perspective.

 

[mn_doggie]

The way I see it, it is a .22LR rifle....not likely to be taken onto the battlefield any time soon. Is the LRHO that important?

That being said, if you empty a full magazine of .22LR on a threat and it hasn't stopped the threat, quickly loading another magazine when you notice the bolt locked back is pretty stupid. Best to get the heck out of Dodge and implement plan B since your plan A was a complete failure.

I commend DT for the work he has done. The lack of a LRHO feature would not stop me from purchasing his product.

More than 3000 rounds thru my 15-22 and in each mag change the LRHO was greatly appreciated.

And it has never been on a battlefield. Nor has my AR15.

Yet the 15-22 is a great trainer for using the AR15. That wouldn't be the case without the lRHO.