United States District Court, D. Oregon, Portland Division
M. Ferris Nathan C. Brunette Stoel Rives LLP Brian C. Park
Stoel Rives LLP Attorneys for Plaintiff
E. Davis Klarquist Sparkman, LLP 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. 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 ‘907 patent.
For the reasons that follow, Leupold’s motion is DENIED
in part and GRANTED in part. Nightforce’s motion is
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 the 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
generally around patents relating to locking adjustment knobs
on riflescopes that can be locked after adjustment in order
to prevent inadvertent adjustment through physical contact or
vibration. At issue here is Count VII, United States Patent
No. 6, 351, 907 (“the ‘907 patent”),
entitled Spiral Cam Mechanism for Rifle Sight
Adjustment. See Brunette Decl. Ex. 2, ECF 92.
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 (1986)
(quoting former Fed.R.Civ.P. 56(c)).
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). 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
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
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 (1986).
Person of Skill in the Art
initial matter, Leupold argues that Nightforce expert Allen
Brandenburg is not an expert in the relevant field and
therefore cannot opine as a “person of skill in the
art.” The Federal Circuit has explained that:
it is an abuse of discretion to permit a witness to testify
as an expert on the issues of noninfringement or invalidity
unless that witness is qualified as an expert in the
pertinent art. Testimony proffered by a witness lacking the
relevant technical expertise fails the standard of
admissibility under Fed.R.Evid. 702. Indeed, where an issue
calls for consideration of evidence from the perspective of
one of ordinary skill in the art, it is contradictory to Rule
702 to allow a witness to testify on the issue who is not
qualified as a technical expert in that art.
Sundance, Inc. v. DeMonte Fabricating Ltd., 550 F.3d
1356, 1363 (Fed. Cir. 2008). In Sundance, the court
considered the admissibility of expert testimony by a patent
attorney on noninfringement and invalidity, among other
issues. The court observed that the defendant, proponent of
the testimony, failed to explain how the attorney was an
expert in the pertinent art of tarps or covers. Id.
at 1362. Nor did the defendant establish that the
attorney’s experience was “sufficiently
related” to the pertinent art. Id. Thus, he
was unqualified to offer expert testimony on the topic of
offers two ways an expert may testify on issues of invalidity
under Rule 702. First, the witness is qualified if he or she
has expertise in the precise pertinent art at issue.
Alternatively, the witness’s testimony may still be
admissible if the expertise possessed by the witness is
“sufficiently related” to the pertinent art.
See Sport Dimension, Inc. v. The Coleman Co.,
Inc., No. CV1400438BROMRWX, 2015 WL 12732710, at *5 (CD.
Cal. Jan. 29, 2015) (concluding that under Sundance,
“an expert need not have an expertise in the specific
pertinent art to be qualified as an expert [under Rule 702],
but the expert must nevertheless demonstrate that his or her
technical background is sufficiently related to that
pertinent art”), aff’d, 820 F.3d 1316
(Fed. Cir. 2016).
Sport Dimension, for example, the court struck an
expert’s testimony after finding that he was
unqualified to opine as a person of skill in the art. 2015 WL
12732710, at * 7. The court noted that the expert intended to
testify on the functionality of a patent.
Id. at *6. The functionality of the patent was
premised on two fields of relevant art. Id. The
court found that the expert had “sufficient knowledge
regarding the first of these fields-the development of
buoyant devices-but not the second field-designing wearable
devices.” Id. The court then noted that
“[o]rdinarily, expertise in any relevant field
would render [the expert] qualified to testify as an expert
on that matter.” Id. (emphasis added). But in
this specific case, the expert’s
ability to testify regarding the functionality of elements of
a device requires him to understand the overall function of
the device, and the function of a wearable buoyant device
such as a personal flotation device is markedly different
than the function of other buoyant devices. Indeed, [the
expert]’s own testimony demonstrates that he has no
better than a lay opinion as to the function of a wearable
Id. The Federal Circuit affirmed, finding that the
district court did not abuse its discretion in concluding the
expert could not testify when he had no experience in the
field of wearable buoyancy devices and his proposed
alternative designs were based solely on his imagination.
Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316,
1323 (Fed. Cir. 2016).
Brandenburg is admittedly not an expert in riflescopes, his
testimony may still be admissible if his knowledge and
expertise are sufficiently related to the relevant field of
art. Leupold argues that the relevant field is riflescopes,
and Brandenburg has no expertise in any analogous field.
Rather, Brandenburg’s closest relevant experience is
his work in endo-surgery tools. While Nightforce does not
name the relevant art, it argues that, for the purposes of
the ‘907 patent, the “appropriate expert is one
familiar with the mechanical engineering principles of
applying a . . . spiral cam mechanism to small, compact
adjustment components.” Def. Resp. 2– 3.
has a BES in engineering and has been licensed as
professional engineer for over thirty years. Conway Decl. Ex.
C, ECF 127. He has significant experience in the field of
mechanical engineering and industrial design. Id.
This experience includes designing the forearm grip of a
rifle component and creating dimensional files for a handgun.
Brunette Decl. Ex. 38 (“Brandenburg Dep.”)
11:23–17:18. It also includes work with fixtures,
automated manufacturing processes, and endoscopic surgical
instruments. Id. at 238:23–242:1.
Brandenburg opines on the infringement and invalidity of
mechanical devices. Based on the parties’ citations to
the record, his opinion is limited to issues related to his
expertise as a professional engineer and industrial
designer-relevant fields given the basic mechanical nature of
the device at issue. The parties have not identified
testimony on issues related to, for example, the
functionality of optical devices generally, lenses, or even
the specialized testing the parties argue is required for the
final product. Thus, given the basic mechanical principals at
issue, and the scope of his testimony, Brandenburg’s
industrial technology and engineering education and
experience is sufficiently related to the pertinent art and
will be both relevant and useful to the jury. Thus, to the
extent that Leupold urges the Court to strike-or at least
disregard-his testimony, the Court declines to take such
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.
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. Id.
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. “The 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 WorldwideAssocs.,
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 [is] 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
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).
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). A
dependent claim cannot be infringed if the independent claim
is not infringed. Wahpeton Canvas Co. v. Frontier,
Inc., 870 F.2d 1546, 1552 n.9 (Fed. Cir. 1989).
moves for summary judgment on the issue of infringement.
Leupold has provided evidence, via expert Byron, that claims
1, 2, 6, 7, 10, 11, 16, 17 and 19 of the ‘907 patent
are infringed by Nightforce’s side focus parallax
adjustment device (“accused
device”).Brunette Decl. Ex. 3 (“Byron
Supplemental Report”) ¶¶ 472–544, ECF
83-3. In response, Nightforce argues that two limitations-the
“pin” and “actuator, ” described in
claims 1, 6, 10, and 16-do not, in fact, appear as claimed in
the accused device. Leupold responds that Nightforce has
raised only claim construction issues and that, when properly
construed, Nightforce has failed to identify a question of
fact as to whether the accused device includes these
Court finds that Nightforce has failed to raise a question of
fact as to whether the accused device contains a
“pin.” The parties appear to agree that a pin is
“a short, rigid, solid protruding structure.”
See Brunette Decl. Ex. 37 (“Brandenburg
Rebuttal”) ¶ 29, ECF 92-6; Byron Supplemental
Report ¶ 474.
to Nightforce, the accused device does not contain a
“pin, ” but rather a “freely rotating
bushing.” Def. Resp. 13. Nightforce does not, however,
challenge the structure at issue-that is, Nightforce does not
contest that the accused device contains, at a minimum, a
bushing that surrounds an elongated screw head.
is well-established that the presence of additional
structure, such as the intervening structure, in the accused
device will not exclude a finding of infringement.”
Bernard Dalsin Mfg. Co. v. RMR Products, Inc., 10
Fed.App’x 882, 888 (Fed. Cir. 2001); Mannesmann
Demag Corp. v. Engineered Metal Products Co., Inc., 793
F.2d 1279, 1282–1283 (Fed. Cir. 1986) (“The
presence of additional elements is irrelevant if all the
claimed elements are present in the accused
structure.”). In Bernard Dalsin, for example,
the patent claimed a chimney damper that mounted to a chimney
flue. 10 Fed.App’x at 883–84. The alleged
infringer argued, in part, that the accused devices did not
infringe because the damper was attached to an interior
ledge, rather than the flue itself. Id. at 888. The
court disagreed and explained that:
[i]n both [of the accused] devices, the damper plate does not
directly contact the top of the chimney flue when it is in
its closed position. RMR asserts that because the damper
plate is not directly mounted to the chimney flue in
either of the accused products, a finding of infringement is
precluded. However, it is well established that the presence
of an additional structure, such as the intervening
structure, in the accused device will not exclude a finding
of infringement . . . and there is no requirement in the
claim here that such additional structure be absent.
Id. (citations omitted) (emphasis in original).
the parties do not contest the existence of an interior
screw. They also do not contest that this screw is a
“short, rigid, solid protruding structure.” The
bushing is at most an intervening structure. Because there is
no requirement in the claim that this additional structure be
absent, a finding of infringement is not precluded. Thus,
Nightforce’s arguments that the accused device lacks a
“pin” are without merit.
also argues, via expert Brandenburg, that the accused device
lacks an actuator as claimed. Brandenburg Rebuttal
¶¶ 31–73. Specifically, Nightforce argues
that the actuator is not positioned between the cam hub and
the tubular housing of the rifle sight, as claimed by the
‘907 patent. Id. Leupold argues that this is a
claim construction issue for the Court.
Court considered the term “actuator” during claim
construction. It held that the “ordinary and customary
meaning of this term as a POSA would understand it controls
and ‘actuator’ [did] not require construction
from the Court.” Leupold & Stevens v.
Lightforce USA, Inc., No.
3:16–cv–01570–HZ, 2018 WL 648362, *12 (D.
Or. Jan. 31, 2018) (“Claim Construction Order”).
In reaching this conclusion, the Court rejected
Nightforce’s proposed definition of “[a] device
for actuating as embodied in the Specification (actuator 122
in Figs. 3, 4, and 5, that is slidably mountable between the
housing and the cam hub, in contact with the drive face of
the cam hub, and that comprises a cam follower engaged with a
spiral cam track on the cam hub).” Id. at
*10–12. The term actuator appears in independent claims
1 and 10 of the ‘907 patent.
relevant part, claim 1 requires:
an actuator slidably mounted for movement along the
longitudinal axis of the housing and including a cam follower
operably engaged in the spiral cam track so that the actuator
moves generally along the longitudinal 20 axis in response to
rotation of the cam hub, the actuator operatively connected
to the optical element to drive the optical element in
response to rotation of the cam hub.
‘907 Patent col. 7 l. 17–24.
via expert Brandenburg, offers a single argument here: that
the actuator must be positioned between the cam hub and
tubular housing of a telescopic rifle sight because the
patent specification does not teach or suggest any
embodiments in which the actuator is not in this position.
Brandenburg Rebuttal ¶¶ 37, 44. Brandenburg then
construes “the term ‘actuator’ . . . as
meaning a component of a focus control knob mechanism that is
positioned between a cam hub and the housing of the sight,
that is slidably mounted for movement along the longitudinal
axis of the housing, and that includes a cam follower for
operable engagement in a spiral cam track of the cam
hub.” Brandenburg Rebuttal ¶ 28. Thus, Brandenburg
clearly applies the proposed construction rejected by the
Court in its original claim construction order. See
Claim Construction Order at *10–12. Nightforce’s
argument-that the accused device does not contain an actuator
as construed by Brandenburg in claim 1-is therefore without
merit. Claim 1 and its dependent claims are therefore
infringed by the accused device.
relevant part, claim 10 claims “a manually adjustable
focus control device projecting outward from the exterior of
the housing.” ‘907 Patent col. 8 ll. 1–2.
The manually adjustable focus control device includes
“an actuator slide.” Id. at ll.
1–22. This actuator slide must be “slidably