DCT

3:17-cv-01153

Lightforce USA Inc v. Leupold & Stevens Inc

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Key Events
Amended Complaint

I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 3:17-cv-01153, D. Or., 10/10/2017
  • Venue Allegations: Venue is alleged to be proper in the District of Oregon because Defendant is incorporated in Oregon, maintains its principal place of business in the district, and engages in the allegedly infringing activities within the district.
  • Core Dispute: Plaintiffs allege that Defendant’s telescopic gunsight reticles infringe six patents related to reticle designs that use a grid system to improve long-range shooting accuracy.
  • Technical Context: The technology involves advanced optical reticles for firearms, which provide visual aiming points to compensate for ballistic factors like bullet drop and wind, a critical function for precision shooting in military, law enforcement, and civilian markets.
  • Key Procedural History: The complaint alleges that the parties have a pre-existing business relationship, wherein Defendant has licensed other reticle designs under the patents-in-suit. The current dispute centers on a separate set of reticles that Plaintiffs allege are unlicensed. Plaintiffs also allege that Defendant had actual knowledge of five of the six asserted patents and its alleged infringement since at least December 15, 2015, following a letter and subsequent telephone call, and knowledge of the sixth patent since June 13, 2017.

Case Timeline

Date Event
1997-12-08 Earliest Priority Date for all Patents-in-Suit
2002-09-24 U.S. Patent No. 6,453,595 Issued
2012-02-07 U.S. Patent No. 8,109,029 Issued
2014-02-25 U.S. Patent No. 8,656,630 Issued
2014-04-29 U.S. Patent No. 8,707,608 Issued
2015-03-03 U.S. Patent No. 8,966,806 Issued
2015-07-29 Plaintiffs' predecessor allegedly sends letter to Defendant identifying five asserted patents
2015-12-15 Plaintiffs' representative and Defendant allegedly discuss infringement of five asserted patents via telephone
2016-05-10 U.S. Patent No. 9,335,123 Issued
2017-06-13 Plaintiffs' representative allegedly communicates infringement of the '123 patent to Defendant's counsel
2017-10-10 First Amended Complaint Filed

II. Technology and Patent(s)-in-Suit Analysis

U.S. Patent No. 6,453,595 - "Gunsight and Reticle Therefor"

  • Patent Identification: U.S. Patent No. 6,453,595, "Gunsight and Reticle Therefor," issued September 24, 2002.

The Invention Explained

  • Problem Addressed: The patent’s background describes the difficulty of hitting targets accurately at very long ranges (in excess of 500 yards) using conventional telescopic gunsights, which do not adequately account for factors like "bullet drop" (the effect of gravity) and "windage" (the effect of wind) without requiring the shooter to make time-consuming mechanical adjustments to the scope ( Compl. ¶1; ’595 Patent, col. 1:11-49).
  • The Patented Solution: The invention is a reticle for a telescopic gunsight that features a grid of markings below the primary horizontal cross-hair. This grid is comprised of evenly spaced secondary horizontal and vertical cross-hairs which provide a shooter with a variety of pre-calibrated aiming points. By selecting the appropriate intersection on the grid, a shooter can visually compensate for both bullet drop and windage without adjusting the scope’s knobs ('595 Patent, Abstract). The primary horizontal cross-hair is positioned "well above the optical center" to provide the necessary field of view to see the extensive grid required for long ranges ('595 Patent, col. 6:62-65).
  • Technical Importance: This approach allows a shooter to rapidly identify the correct aiming point for a given distance and wind condition, enabling faster and more reliable target acquisition at long ranges compared to traditional methods ('595 Patent, col. 2:51-61).

Key Claims at a Glance

  • The complaint asserts independent claim 1 (Compl. ¶21).
  • The essential elements of independent claim 1 include:
    • An improved telescopic gunsight comprising a housing, objective lens, ocular lens, and a reticle.
    • The reticle having a primary vertical cross-hair and a primary horizontal cross-hair.
    • A plurality of evenly spaced secondary horizontal cross-hairs intersecting the primary vertical cross-hair.
    • A plurality of secondary vertical cross-hairs intersecting at least some of the secondary horizontal cross-hairs to form aiming points.
    • Rangefinding markings.
  • The complaint also asserts dependent claim 5 and reserves the right to assert other claims (Compl. ¶21).

U.S. Patent No. 8,109,029 - "Apparatus and Method for Calculating Aiming Point Information"

  • Patent Identification: U.S. Patent No. 8,109,029, "Apparatus and Method for Calculating Aiming Point Information," issued February 7, 2012.

The Invention Explained

  • Problem Addressed: The patent addresses the same fundamental challenge as the '595 Patent: conventional gunsights are "not generally useful at long ranges in excess of 400-800 yards" because of the difficulty in compensating for bullet drop and windage effects without slow and cumbersome adjustments (’029 Patent, col. 2:9-26).
  • The Patented Solution: The patent claims a reticle apparatus featuring a system of "simultaneously visible" primary and secondary cross-hairs. This grid structure creates a field of aiming points that a shooter can use to quickly and accurately adjust for projectile drop and windage based on the target's range and environmental conditions, eliminating the need to manipulate the scope's adjustment knobs ('029 Patent, Abstract; col. 4:1-10). The solution provides a visual framework for rapid ballistic compensation directly in the shooter's field of view ('029 Patent, col. 3:17-34).
  • Technical Importance: The invention provides a means for a shooter to engage targets accurately at various ranges by integrating a comprehensive set of aiming points into the optical device itself, streamlining the targeting process ('029 Patent, col. 3:17-34).

Key Claims at a Glance

  • The complaint asserts independent claims 1, 21, and 24 (Compl. ¶29).
  • The essential elements of independent claim 1 include:
    • A reticle comprising a simultaneously visible primary horizontal cross-hair and a simultaneously visible primary vertical cross-hair.
    • A plurality of simultaneously visible secondary horizontal cross-hairs intersecting the primary vertical cross-hair at predetermined distances.
    • A plurality of simultaneously visible secondary vertical cross-hairs intersecting at least some of the secondary horizontal cross-hairs.
    • An intersection of a secondary vertical and secondary horizontal cross-hair provides an aiming point.
  • The complaint reserves the right to assert additional dependent claims (Compl. ¶29).

U.S. Patent No. 8,656,630 - "Apparatus and Method for Aiming Point Calculation"

  • Patent Identification: U.S. Patent No. 8,656,630, "Apparatus and Method for Aiming Point Calculation," issued February 25, 2014 (Compl. ¶36).
  • Technology Synopsis: The patent addresses long-range shooting inaccuracy by disclosing a reticle with a grid of cross-hairs for compensating for bullet drop and windage without mechanical scope adjustments (’630 Patent, col. 2:28-48; Abstract). This design is intended to enable rapid and accurate target engagement at various ranges ('630 Patent, col. 3:17-35).
  • Asserted Claims: Independent claims 1, 21, and 24 (Compl. ¶37).
  • Accused Features: The grid-like structure of the accused ILLUM. IMPACT series, CMR-W GRID, TS-29 X1, and TS-32 X1 reticles are alleged to contain the claimed features (Compl. ¶37).

U.S. Patent No. 8,707,608 - "Apparatus and Method for Calculating Aiming Point Information"

  • Patent Identification: U.S. Patent No. 8,707,608, "Apparatus and Method for Calculating Aiming Point Information," issued April 29, 2014 (Compl. ¶44).
  • Technology Synopsis: This patent describes a reticle for telescopic gunsights with a system of primary and secondary cross-hairs. This grid provides a shooter with pre-calculated aiming points to account for projectile trajectory over long distances, avoiding the need for manual scope adjustments (’608 Patent, col. 2:28-48; Abstract).
  • Asserted Claims: Independent claims 1, 21, and 24 (Compl. ¶45).
  • Accused Features: The grid of aiming points in the accused ILLUM. IMPACT series, CMR-W GRID, TS-29 X1, and TS-32 X1 reticles are alleged to practice the invention (Compl. ¶45).

U.S. Patent No. 8,966,806 - "Apparatus and Method for Aiming Point Calculation"

  • Patent Identification: U.S. Patent No. 8,966,806, "Apparatus and Method for Aiming Point Calculation," issued March 3, 2015 (Compl. ¶52).
  • Technology Synopsis: The patent discloses a reticle with a grid of horizontal and vertical cross-hairs to aid in long-range shooting. The grid allows a shooter to quickly select an aiming point that compensates for bullet drop and wind, thereby avoiding mechanical adjustments to the scope (’806 Patent, col. 2:28-48; Abstract).
  • Asserted Claims: Independent claims 1, 22, and 24 (Compl. ¶53).
  • Accused Features: The grid structure of the accused CMR-W GRID reticle is alleged to infringe (Compl. ¶53).

U.S. Patent No. 9,335,123 - "Apparatus and Method for Aiming Point Calculation"

  • Patent Identification: U.S. Patent No. 9,335,123, "Apparatus and Method for Aiming Point Calculation," issued May 10, 2016 (Compl. ¶60).
  • Technology Synopsis: This patent discloses a reticle for a gunsight having a grid of aiming points formed by primary and secondary cross-hairs. This system is designed to provide rapid and accurate aiming at various ranges by allowing visual compensation for bullet trajectory without adjusting scope knobs ('123 Patent, col. 2:28-48; Abstract).
  • Asserted Claims: Independent claims 1, 60, and 85 (Compl. ¶61).
  • Accused Features: The grid structure of the accused ILLUM. IMPACT series, TS-29 X1, and TS-32 X1 reticles are alleged to infringe (Compl. ¶61).

III. The Accused Instrumentality

Product Identification

  • The accused instrumentalities are telescopic gunsights and/or reticles sold by Defendant, specifically those marketed as ILLUM. IMPACT-23 MOA, IMPACT-29 MOA, ILLUM. IMPACT-29 MOA, IMPACT-32 MOA, ILLUM IMPACT-45 MOA, CMR-W GRID, TS-29 X1, and TS-32 X1 (Compl. ¶11).

Functionality and Market Context

  • The complaint alleges that each of the accused products incorporates the "fundamental reticle design" of the patents-in-suit, containing "primary horizontal and vertical crosshairs, along with evenly-spaced secondary horizontal crosshairs having aiming points thereon" (Compl. ¶12). The complaint specifically alleges that the Defendant's "CMR-W GRID" reticle "directly copies a majority of the design features of Plaintiffs' Tremor3 reticles," which are described as "highly popular for both civilian and military applications" (Compl. ¶12). Exhibit U, cited in the complaint, is described as showing the direct copying of design features from Plaintiffs' Tremor3 reticle by Defendant's CMR-W GRID reticle (Compl. ¶12). Plaintiffs allege that Defendant is "directly competing with pirated technology" and that this competition will cause "permanent or lasting harm" (Compl. ¶25).

IV. Analysis of Infringement Allegations

'595 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a primary vertical cross-hair, a primary horizontal cross-hair intersecting said primary vertical cross-hair The accused reticles each contain primary horizontal and vertical crosshairs. ¶12 col. 14:9-12
a plurality of secondary horizontal cross-hairs having predetermined thickness evenly spaced a predetermined distance along and intersecting said primary vertical cross-hair The accused reticles contain evenly-spaced secondary horizontal crosshairs along the primary vertical crosshair. ¶12 col. 14:13-18
a plurality of secondary vertical cross-hairs having predetermined thickness evenly spaced a predetermined distance along at least some of said secondary horizontal cross-hairs The accused reticles contain secondary vertical crosshairs along the secondary horizontal crosshairs, which create aiming points. ¶12 col. 14:19-23

'029 Patent Infringement Allegations

Claim Element (from Independent Claim 1) Alleged Infringing Functionality Complaint Citation Patent Citation
a) a simultaneously visible primary horizontal cross-hair; b) a simultaneously visible primary vertical cross-hair; The accused reticles each contain primary horizontal and vertical crosshairs. ¶12 col. 39:50-52
c) a plurality of simultaneously visible secondary horizontal cross-hairs intersecting at predetermined distances said simultaneously visible primary vertical cross-hair The accused reticles have evenly-spaced secondary horizontal crosshairs intersecting the primary vertical axis. ¶12 col. 39:53-56
d) a plurality of simultaneously visible secondary vertical cross-hairs intersecting... at least some of said secondary horizontal cross-hairs... wherein an intersection... provides an aiming point. The accused reticles have secondary vertical crosshairs on the secondary horizontal crosshairs, forming aiming points. ¶12 col. 39:57-62

Identified Points of Contention

  • Scope Questions: The patents-in-suit repeatedly describe the invention in the context of solving problems unique to long-range shooting (e.g., beyond 500 yards) ('595 Patent, col. 1:25-27). A question for the court may be whether the term "telescopic gunsight" and the functions of the claimed elements are implicitly limited to long-range applications, or if they can be read to cover reticles designed for short or mid-range use that may share a grid-like appearance for different technical purposes.
  • Technical Questions: The complaint alleges the accused reticles have "evenly-spaced" secondary crosshairs (Compl. ¶12). The '595 patent specification describes this spacing with reference to a specific "inches of angle" scale ('595 Patent, col. 6:35-44). A key factual question will therefore be whether the secondary crosshairs in the accused products are in fact "evenly spaced" and whether that spacing corresponds to the system taught in the patent.

V. Key Claim Terms for Construction

  • The Term: "evenly spaced"
  • Context and Importance: This term appears in the independent claims of both the '595 and '029 patents and is a cornerstone of the infringement allegation (Compl. ¶12). The construction of this term will be critical in determining whether the grid patterns of the accused reticles fall within the scope of the claims. Practitioners may focus on this term because its definition could either broadly cover any regular grid or be narrowly limited to the specific measurement system disclosed in the patents.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: The claims themselves use the general term "evenly spaced" without explicitly requiring the "inches of angle" scale mentioned in the specification. A party might argue this supports giving the term its plain and ordinary meaning of a regular, repeating interval.
    • Evidence for a Narrower Interpretation: The specification of the '595 patent defines a specific, non-conventional scale called "inches of angle" and states, "The spacing between the range-finding cross-hairs is most preferably based upon" this scale ('595 Patent, col. 6:35-38). A party may argue that the repeated and detailed explanation of this specific scale as the basis for the spacing limits the term "evenly spaced" to reticles that implement this disclosed methodology.

VI. Other Allegations

  • Indirect Infringement: The complaint does not provide sufficient detail for analysis of indirect infringement. While the prayer for relief requests an injunction against inducing and contributing to infringement, the factual allegations in the main body of the complaint focus exclusively on acts of direct infringement by the Defendant (Compl. ¶21, 29).
  • Willful Infringement: Willfulness is alleged for all asserted patents (Compl. ¶24, 32, 40, 48, 56, 64). The allegations are based on purported pre-suit knowledge of the patents and the alleged infringement. For five of the patents, knowledge is alleged since "no later than December 15, 2015," stemming from a July 2015 letter and a subsequent telephone call (Compl. ¶16). For the '123 patent, knowledge is alleged since "no later than June 13, 2017" (Compl. ¶18). The willfulness claim is further supported by allegations that Defendant has a license to the patents-in-suit for other products and has "egregiously declined to bring the reticles listed herein... under license" (Compl. ¶24).

VII. Analyst’s Conclusion: Key Questions for the Case

  • A core issue will be one of claim construction: can the term "evenly spaced," which the patent specifications describe in the context of a specific "inches of angle" measurement system, be construed more broadly to cover any reticle with a regular grid pattern, or will the detailed disclosure be found to limit the claim's scope?
  • A key evidentiary question will be the scope of the existing license: what are the specific terms of the license agreement between the parties for other reticles under the same patents, and do those terms shed light on whether Defendant's sales of the accused products constituted a good-faith disagreement over contractual scope or a willful disregard of known patent rights?
  • A central factual question for infringement will be one of technical implementation: do the actual, measured grid layouts of each of the accused reticles meet every limitation of the asserted claims, or do material differences exist in their spacing, structure, and intended function that place them outside the scope of the patented inventions?