Leupold & Stevens, Inc. v. Lightforce USA, Inc.
| Decision Date | 21 January 2020 |
| Docket Number | No. 3:16-cv-01570-HZ,3:16-cv-01570-HZ |
| Citation | 434 F.Supp.3d 886 |
| Parties | LEUPOLD & STEVENS, INC., Plaintiff, v. LIGHTFORCE USA, INC. d/b/a Nightforce Optics and Nightforce USA, Defendant. |
| Court | U.S. District Court — District of Oregon |
Kassim M. Ferris, Nathan C. Brunette, Stoel Rives LLP, 760 SW Ninth Ave., Suite 3000, Portland, OR 97205, Brian C. Park, Stoel Rives LLP, 600 University Street, Suite 3600, Seattle, WA 98101, Attorneys for Plaintiff
Scott E. Davis, Klarquist Sparkman, LLP, 121 SW Salmon St., Suite 1600, Portland, OR 97204, David Casimir, Casimir Jones S.C., 2275 Deming Way, Suite 310, Middleton, WI 53562, Attorneys for Defendant
Plaintiff Leupold & Stevens, Inc. ("Leupold") brings this action against Defendant Lightforce USA, Inc. ("Nightforce") alleging that it infringes eight of Leupold's patents concerning optical devices such as riflescopes. Both parties submitted motions for summary judgment on all eight patents, addressing more than seventy claims and numerous defenses. In this opinion, the Court resolves only those motions related to the '305 patent. For the reasons that follow, Leupold's motions are GRANTED in part and DENIED in part. Nightforce's motions are GRANTED in part and DENIED AS MOOT in part.
Leupold and Nightforce design, manufacture, and sell, among other things, optical scopes. Am. Compl. ¶¶ 2–4, ECF 28. Leupold alleges that Nightforce's accused products infringe its eight patents-in-suit involving optical device structures and functions including: locking adjustment knobs; pivoting lens units; and pivoting lens covers. Id. at ¶¶ 10–16. At issue here is Count V, United States Patent No. 6,816,305 ("the '305 patent"), entitled Pre-Assembled Pivoting Lens Unit . See Brunette Decl. Ex. 1, ECF 92-1.
Summary judgment is appropriate if there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(a). The moving party bears the initial responsibility of informing the court of the basis of its motion, and identifying those portions of " ‘the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,’ which it believes demonstrate the absence of a genuine issue of material fact." Celotex Corp. v. Catrett , 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986) (quoting former Fed. R. Civ. P. 56(c) ). A dispute about a material fact is "genuine" "if the evidence is such that a reasonable jury could return a verdict for the nonmoving party." Vas-Cath Inc. v. Mahurkar , 935 F.2d 1555 (Fed. Cir. 1991) (citing Anderson v. Liberty Lobby, Inc. , 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986) ).
Once the moving party meets its initial burden of demonstrating the absence of a genuine issue of material fact, the burden then shifts to the nonmoving party to present "specific facts" showing a "genuine issue for trial." Fed. Trade Comm'n v. Stefanchik , 559 F.3d 924, 927–28 (9th Cir. 2009) (internal quotation marks omitted). The nonmoving party must go beyond the pleadings and designate facts showing an issue for trial. Bias v. Moynihan , 508 F.3d 1212, 1218 (9th Cir. 2007) (citing Celotex , 477 U.S. at 324, 106 S.Ct. 2548 ).
The substantive law governing a claim determines whether a fact is material. Suever v. Connell , 579 F.3d 1047, 1056 (9th Cir. 2009). The court draws inferences from the facts in the light most favorable to the nonmoving party. Earl v. Nielsen Media Research, Inc. , 658 F.3d 1108, 1112 (9th Cir. 2011). If the factual context makes the nonmoving party's claim as to the existence of a material issue of fact implausible, that party must come forward with more persuasive evidence to support his claim than would otherwise be necessary. Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 475 U.S. 574, 587, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986).
In its response to Nightforce's motion for summary judgment, Leupold withdrew with prejudice its assertions of infringement as to claims 1, 5–8, and 12–15 of the '305 patent. Leupold argues that Nightforce's invalidity assertions as to these claims are therefore moot.
"Article III courts have subject matter jurisdiction only if there is an actual case or controversy." Ameranth, Inc. v. Domino's Pizza, LLC , 2019-1144, 792 Fed.Appx. 780, 783 (Fed. Cir. Nov. 1, 2019) (citing MedImmune, Inc. v. Genentech, Inc. , 549 U.S. 118, 126–27, 127 S.Ct. 764, 166 L.Ed.2d 604 (2007) ). "In patent cases, ‘the existence of a case or controversy must be evaluated on a claim-by-claim basis.’ " Fox Group, Inc. v. Cree, Inc. , 700 F.3d 1300, 1307 (Fed. Cir. 2012) (quoting Jervis B. Webb Co. v. So. Sys., Inc. , 742 F.2d 1388, 1399 (Fed. Cir. 1984) (citations omitted)). "[J]urisdiction must exist at all stages of review, not merely at the time the complaint [was] filed." Streck, Inc. v. Research & Diagnostic Sys., Inc. , 665 F.3d 1269, 1282–83 (Fed. Cir. 2012) () (quotations and citations omitted).
An original case or controversy may cease if the patentee withdraws its claims of infringement. Ameranth, Inc. , 792 Fed.Appx. at 783–85. Thus, "a counterclaimant must show a continuing case or controversy with respect to withdrawn or otherwise unasserted claims." Streck, Inc. , 665 F.3d at 1283. In Fox Group, Inc. , for example, the Federal Circuit held that a district court erred in finding all claims of a patent invalid after the patentee had narrowed the focus of its infringement cause of action to only two claims before summary judgment. 700 F.3d at 1308 ; see also Alcon Research Ltd. v. Barr Laboratories, Inc. , 745 F.3d 1180, 1188 (Fed. Cir. 2014) ().
Here, Leupold withdrew claims 1, 5–8, and 12–15 with prejudice before a dispositive ruling by the Court. Nightforce's hypothesized future litigation against a third party not privy to this action, based solely upon Leupold's right to threaten or maintain litigation in the future for infringement of the withdrawn claims, does not establish the existence of a continuing case or controversy. Thus, Nightforce's invalidity assertions as to claims 1, 5–8, and 12–15 are moot.
A patent infringement analysis involves two steps. First, the court construes the asserted patent claims. Markman v. Westview Instruments, Inc. , 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc). Second, the factfinder determines whether the accused product or method infringes the asserted claim as construed. Id.
The first step, claim construction, is a matter of law "exclusively within the province of the court." Markman v. Westview Instruments, Inc. , 517 U.S. 370, 372, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ; Vitronics Corp. v. Conceptronic, Inc. , 90 F.3d 1576, 1582 (Fed. Cir. 1996). "It is a bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp. , 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (quotation marks and citations omitted). Patent claims must precisely define the relevant invention to put both the public and competitors on notice of the claimed invention. Id.
The second step in the infringement analysis requires the factfinder to determine whether the accused product or method infringes the asserted claim as construed. Markman , 52 F.3d at 976. At this step, "[p]atent infringement, whether literal or by equivalence, is an issue of fact, which the patentee must prove by a preponderance of the evidence." Siemens Med. Sols. USA, Inc. v. Saint–Gobain Ceramics & Plastics, Inc. , 637 F.3d 1269, 1279 (Fed. Cir. 2011).
To establish literal infringement, "every limitation set forth in a claim must be found in an accused product, exactly." Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. , 699 F.3d 1340, 1356 (Fed. Cir. 2012) (internal quotation marks omitted). Similarly, "a patent for a method or process is not infringed unless all steps or stages of the claimed process are utilized." Roberts Dairy Co. v. United States , 530 F.2d 1342, 1354 (Ct. Cl. 1976).
Leupold moves for summary judgment on the issue of infringement, arguing that "for all Nightforce riflescopes made, sold, offered for sale, or imported since August 2, 2010, Nightforce infringed method claims 26 and 27[.]" Pl. Mot. 4. Specifically, scopes made in the Unites States infringe under 35 U.S.C. § 271(a),1 and scopes made in Japan infringe under 35 U.S.C. § 271(g).
"Direct infringement under § 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity." Akamai Technologies, Inc. v. Limelight Networks, Inc. , 797 F.3d 1020, 1022 (Fed. Cir. 2015). "Where more than one actor is involved in practicing the steps, a court must determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement." Id. An entity is "responsible for others' performance of method steps in two sets of circumstances: (1) where that entity directs or controls others' performance, and (2) where the actors form a joint enterprise." Id.
Claims 26 and 27 each require the "pre-assembly" of a pivoting lens unit. Claim 26 provides:
To continue reading
Request your trial
-
Anderson v. Intel Corp.
... ... UMG Recordings , Inc ... v ... Shelter Cap ... Partners LLC , 718 F.3d ... Skanska USA Bldg ., Inc ., No. 3:16-CV-0352-AC, 2018 WL ... ...
-
Top Brand LLC v. Cozy Comfort Co.
...not know how [the two disputed terms] differ[ed]” and that he “[did] not know what [another disputed term] means as used in the claims.” Id. at 899. “Without further argument evidence, [the defendant] argue[d] that this admission alone evinces a ‘lack of clarity' in the meaning of the terms......