United States District Court, D. Oregon
M. Ferris Nathan C. Brunette Stoel Rives LLP., Brian C. Park
Stoel Rives LLP., Attorneys for Plaintiff.
E. Davis Klarquist Sparkman, LLP, SW Salmon St., David
Casimir Casimir Jones S.C. Attorneys for Defendant.
OPINION & ORDER
A. HERNÁNDEZ UNITED STATES DISTRICT JUDGE.
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. The patents-in-suit are listed below. The
parties submitted a Joint Markman Chart identifying
several disputed terms or phrases from the patents-in-suit.
The parties then filed claim construction briefs and
responsive memoranda. The Court held a claim construction
hearing, also known as a Markman hearing, in which
the parties presented oral arguments based on their memoranda
and supporting evidence. The Court construes the disputed
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 (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.
construe a patent claim, courts first look to the language of
the claims in the patent itself, the description in the
patent's specification, and the patent's prosecution
history, all of which constitute a record “on which the
public is entitled to rely.” Vitronics, 90
F.3d at 1583; Dow Chem. Co. v. Sumitomo Chem. Co.,
257 F.3d 1364, 1372 (Fed. Cir. 2001). In most cases, the
court should be able to resolve ambiguous claim terms by
analyzing this intrinsic evidence. See
Phillips, 415 F.3d at 1313-14. The court considers
extrinsic evidence only if the intrinsic evidence is
insufficient to resolve the ambiguity of a term.
Vitronics, 90 F.3d at 1586.
actual words of the claim are the controlling focus.”
Digital Biometrics, Inc. v. Identix, Inc., 149 F.3d
1335, 1344 (Fed. Cir. 1998). “[T]he words of the claims
are generally given their ordinary and customary
meaning.” Phillips, 415 F.3d at 1312
(quotation marks and citations omitted). “[T]he
ordinary and customary meaning of a claim term is the meaning
that the term would have to a person of ordinary skill in the
art in question at the time of the invention, i.e., as of the
effective filing date of the patent application.”
Id. at 1313. There is a “heavy
presumption” that a claim term carries its ordinary and
customary meaning, and a party seeking to convince a court
that a term has some other meaning “must, at the very
least, ” point to statements in the written description
that “affect the patent's scope.” Johnson
Worldwide Assocs., Inc. v. Zebco Corp., 175
F.3d 985, 989 (Fed. Cir. 1999) (quotation marks and citation
omitted). This may be accomplished if: (1) “a different
meaning clearly and deliberately set forth in the intrinsic
materials” of the patent; or (2) use of “the
ordinary and accustomed meaning of a disputed term would
deprive the claim of clarity[.] K-2 Corp. v. Salomon
S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (citations
omitted). In making this assessment, the court should use
common sense and “the understanding of those of
ordinary skill in the art” of the patent at issue,
unless the patent history supplies another meaning.
Id. at 1365.
the plain language of the claims, the patent specification is
always highly relevant and often dispositive to the proper
construction. Vitronics, 90 F.3d at 1582 (explaining
that the specification is “the single best guide to the
meaning of a disputed term”). The purpose of the patent
specification is to teach and enable those skilled in the art
to make and use the invention, along with the best method for
doing so. Cyber Acoustics, LLC v. Belkin Int'l.,
Inc., No. 3:13-cv-01144-SI, 2014 WL 1225198, at *2 (D.
Or. Mar. 24, 2014) (citing Phillips, 415 F.3d at
1323). The inventor can use the specification to describe the
invention in a number of ways, such as describing different
“embodiments” of the invention and by assigning
particular meanings to specific claim language.
Metabolite Lab., Inc. v. Lab. Corp. of Am. Holdings,
370 F.3d 1354, 1360 (Fed. Cir. 2004); Phillips, 415
F.3d at 1316. The embodiments serve as illustrative examples
of the invention claimed. Phillips, 415 F.3d at 1323
(“One of the best ways to teach a person of ordinary
skill in the art how to make and use the invention is to
provide an example of how to practice the invention in a
particular case.”). The inventor can also clarify that
he or she intends the claim language to carry a specific
meaning different from its ordinary one. Id. In
these cases, “the inventor's lexicography
governs.” Id. at 1316.
the prosecution history, which contains the record of the
proceedings before the Patent and Trademark Office, informs
what a person skilled in the art would understand the term to
mean. Vitronics, 90 F.3d. at 1582-83. The
prosecution history becomes useful where it “provides
evidence of how the PTO and the inventor understood the
patent.” Phillips, 415 F.3d at 1317. However,
this evidence is less valuable because it represents an
“ongoing negotiation” between the inventor and
the PTO. Id. The final result of that negotiation,
the patent itself, provides better evidence of the
claim's intended meanings at the time the patent issued.
and Defendant design, manufacture, and sell, among other
things, optical scopes. Am. Compl. ¶¶ 2-4, ECF 28.
Plaintiff alleges that Defendant'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. The dispute centers around patents
relating locking adjustment knobs on riflescopes that can be
locked after adjustment in order to prevent inadvertent
adjustment through physical contact or vibration.
I, United States Patent No. 8, 006, 429 (“the
‘429 patent”), entitled Locking Adjustment
Turret Knob. See Ferris Decl. Ex. 2, ECF 53.
II, United States Patent No. 8, 516, 736 (“the
‘736 patent”), entitled Locking Adjustment
Knob for a Sighting Device. See Ferris Decl.
VIII, United States Patent No. 9, 665, 120 (“the
‘120 patent”), entitled Locking Adjustment
Knob. Ferris Decl. Ex. 4. The ‘429, ‘736,
and ‘120 patents are collectively known as the
“Windauer patents, ” a namesake gained from their
III, United States Patent No. 9, 188, 408 (“the
‘408 patent”), entitled Auto-Locking
Adjustment Device. Ferris Decl. Ex. 5.
IV, United States Patent No. 9, 170, 068 (“the
‘068 patent”), entitled Locking Adjustment
Device. Ferris Decl. Ex. 6.
V, United States Patent No. 6, 816, 305 (“the
‘305 patent”), entitled Pre-Assembled
Pivoting Lens Unit. Ferris Decl. Ex. 7.
VI, United States Patent No. 7, 721, 480 (“the
‘480 patent”), entitled Pivoting Lens Covers
for Riflescopes and the Like. Ferris Decl. Ex. 8.
VII, United States Patent No. 6, 351, 907 (“the
‘907 patent”), entitled Spiral Cam Mechanism
for Rifle Sight Adjustment. Ferris Decl. Ex. 9.
parties raised thirty-eight disputed terms in their Joint
Markman Chart and claim construction briefs.
See Joint Markman Chart, ECF 45. Upon the
Court's request, the parties narrowed their list of
disputed terms down to fifteen terms for purposes of the
Markman hearing. See Joint Notice of Selected Terms,
ECF 62. The Court heard arguments on twelve of the fifteen
disputed terms. See Minutes of Proceedings, ECF 65.
The Court will construe the twelve disputed terms that were
discussed at the hearing.
Terms from Counts I, II, and VIII
“telescopic sight” (the ‘429 patent)
“sighting device” (the ‘120 patent)
“actuator” (the ‘736 patent)
“selectively moveable” / “the second
portion selectively moveable between locked and unlocked
positions” (the ‘736 patent)
“engage one another in a locked position” (the
Terms from Count IV
“locking adjustment device for adjusting a setting of a
riflescope or other aiming device” (the ‘068
“around” (the ‘068 patent)
Terms from Count VII 8. “drive
face” (the ‘907 patent)
“cam track” (the ‘907 patent)
“actuator” (the ‘907 patent)