In an announcement to their dealers earlier this week, Mega explains one of their competitors has obtained a patent that grants them ownership of the monolithic rail platform. Mega states they do not want to put the resources into the expense of ongoing litigation and instead will work to bring a new platform to market that will exceed the performance of existing receivers
The company became aware of possible US patent infringement issues earlier this spring and spent a couple months conferring with their legal counsel and trying to get in contact with the patent holder.
I spoke with Jason Curns, manager of Mega Arms, who said they had explored other options before taking this step. "We reached out to the patent holder to discuss a licensing deal and we never heard back," Curns said.
GearScout has learned that the patent holder is Karl Lewis, of Lewis Machine and Tool. Also listed as inventors are James Bargren, Jacob Schafer and Neal Hohl. This patent application was filed in 2002, recently deemed patentable and barring administrative complications will be published in August 7, 2012. The date of publication is the date the patent protection becomes active.
Larger companies with existing patents on similar systems (or large coffers), such as Colt, POF and VLTOR are less likely to be the target of early patent assertions by LMT. Should LMT go after such a company, they risk counter claims of patent infringement based one or more patents owned by the accused company. LMT also risks inviting a well funded attack on the validity of their patent, which may take place in federal court in the form of a declaratory judgment of invalidity, or at the U.S. Patent Office in the form of a re-examination according to industry patent attorney Griff Griffin of Sutherland Asbill & Brennan LLP.
But, news of the patent award could be like a bomb going off in the offices of smaller companies that don't have their own patents, or can't afford to defend their designs if LMT goes after them for infringing on their monolithic patent. Getting the patent office to re-examine a patent can cost anywhere from $25k-$100k, and seeing legal action all the way through a trial can cost $1.5m-$3m. These companies, like Mega Arms, are left with essentially four courses of action: pay a licensing fee to the patent holder, banding together to pool resources to fight the patent holder, or redesigning their product to avoid infringement of the patent, or simply scrapping their product.
Griffin explains it's normal for a company to be very quiet in the months between learning their patent has been approved and the date the patten is actually published. "This is a delicate time when another party could easily come in and derail the patent before it's issued," says Griffin.
"Any third party could send prior art to the applicant," says Griffin, "which if close to the claimed invention may cause the applicant to pull the application out of allowance and back into examination so that new prior art can be considered."
Once the patent is officially issued, he says, companies will typically utilize their patent as best suits their company's interests. This could include sitting quietly and waiting for an appropriate opportunity to assert or leverage the patent, pursuing licensing arrangements, leveraging the patent in other business transactions, enforcing their monopoly by asserting the patent against alleged infringers, or passively using the patent merely as a deterrent to others that may be considering filing a patent infringement law suit against them.
In the broadest interpretation of their patent, it covers a monolithic rail platform that has:
- a handguard portion adapted to receive the barrel
- an upper receiver portion that houses a bolt carrier and is integrally formed with handguard
- a coupling at a forward end of the upper receiver, integrated with the handguard portion, that has a releasable clamp to hold the barrel
There is also language in the patent that covers the use rotating bolts, barrel extensions, contiguous rails, some specific clamping arrangement and what sounds like a proprietary bolt carrier design.
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