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Leupold & Stevens, Inc. v. Lightforce USA, Inc.

United States District Court, D. Oregon, Portland Division

September 26, 2019


          Kassim M. Ferris Nathan C. Brunette Stoel Rives LLP Brian C. Park Stoel Rives LLP Attorneys for Plaintiff

          Scott E. Davis Klarquist Sparkman, LLP David Casimir Casimir Jones S.C. Attorneys for Defendant

          OPINION & ORDER


         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 ‘907 patent. For the reasons that follow, Leupold’s motion is DENIED in part and GRANTED in part. Nightforce’s motion is DENIED.


         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 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.


         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 (1986) (quoting former Fed.R.Civ.P. 56(c)).

         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). 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).

         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 (1986).


         I. Person of Skill in the Art

         As an 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 invalidity. Id.

         Sundance 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).

         In 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 buoyant device.

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).

         While 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.

         Brandenburg 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.

         Here, 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 action.

         II. Infringement

         A. Standards

         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 (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.

         To 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.

         Beyond 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 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). 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).

         B. Analysis

         Leupold 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”).[1]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 limitations.

         i. Pin

         The 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.

         According 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.

         “[I]t 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).

         Here, 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.

         ii. Actuator

         Nightforce 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.

         The 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.

         a. Claim 1

         In 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.

         Nightforce, 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.

         b. Claim 10

         In 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 ...

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