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

> District Court, D. Oregon · November 17, 2020

URL: https://www.frixlaw.com/law-library/cases/10392625

## Case

- **Court:** District Court, D. Oregon
- **Decided:** November 17, 2020
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

LEUPOLD & STEVENS, INC., No. 3:16-cv-01570-HZ

Plaintiff, OPINION & ORDER

v.

LIGHTFORCE USA, INC. d/b/a
NIGHTFORCE OPTICS and
NIGHTFORCE USA,

Defendant.

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

HERNÁNDEZ, District Judge:
Plaintiff Leupold & Stevens, Inc. (“Leupold”) brings this action against Defendant
Lightforce USA, Inc. (“Nightforce”) alleging the infringement of eight Leupold patents. Both
parties submitted motions for summary judgment on all eight patents. To date, the Court has
resolved motions related to the ‘305 patent, the ‘907 patent, and Nightforce’s affirmative defense
under 28 U.S.C. § 1498(a). In this opinion, the Court resolves the remaining motions. 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 in part.
BACKGROUND
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. Before
the Court are the parties’ motions for summary judgment on Count I, United States Patent No.
No. 8,006,429 (“the ‘429 patent”); Count II, United States Patent No. 8,516,736 (“the ‘736
patent”); Count III, United States Patent No. 9,188,408 (“the ‘408 patent”); Count IV, United
States Patent No. 9,170,068 (“the ‘068 patent”); and Count VIII, United States Patent No.
9,665,120 (“the ‘120 patent”).

STANDARDS
Summary judgment is appropriate if there is no genuine dispute of 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)). 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, 1560 (Fed. Cir. 1991) (citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248
(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).
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 about 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).
DISCUSSION
Person of Skill in the Art
As an initial matter, Leupold argues that Nightforce expert Douglas DuFaux 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). Sundance
offers two ways an expert may testify on issues of invalidity and infringement under Rule 702.
First, the witness is qualified if he or she has expertise in the precise pertinent art at issue. Id. at
1362 (patent attorney was not an expert in the precise pertinent art of tarps or covers and
therefore could not testify on the issues of noninfringement and invalidity). Alternatively, the
witness’s testimony may still be admissible if the witness’s expertise is “sufficiently related” to
the pertinent art. See Sport Dimension, Inc. v. The Coleman Co., Inc., No.
CV1400438BROMRWX, 2015 WL 12732710, at *5 (C.D. 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 him
unqualified to testify about the functionality of elements of a wearable buoyant device. 2015 WL
12732710 at *6–7. The functionality of this wearable buoyant device was premised on two fields
of relevant art. Id. While the expert had “sufficient knowledge regarding the first of these
fields—the development of buoyant devices,” he lacked sufficient knowledge regarding the
“second field—designing wearable devices.” Id. The court 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 the district court did not abuse its discretion in
excluding the expert testimony where the expert had no experience in the field of “wearable
buoyancy devices” and where he proposed alternative designs based on his “imagination.” Sport
Dimension, Inc. v. Coleman Co., 820 F.3d 1316, 1323 (Fed. Cir. 2016).
Here, Leupold appears to identify the relevant art as “riflescopes or adjustment knobs for
riflescopes.” Pl. Mot. Summ. J. 20 (“Pl. Mot.”), ECF 101. Nightforce, in turn, argues that “the
five locking turret patents (the ‘408 patent, the ‘068 patent, and the three Windauer patents[)] . . .
are directed to locking adjustment knobs” more generally. Def. Resp. 2, ECF 120. According to
Nightforce, “the appropriate expert is [therefore] familiar with the mechanical engineering
principles of applying a locking mechanism . . . to small, compact adjustment components.” Id.
at 2–3. The Court agrees; as discussed throughout this opinion, the Court is not convinced that
the patents at issue are directed solely to riflescopes. See, e.g., ‘068 Patent col. 1 ll. 5–9, ECF 92-

1 (“The field of the present disclosure relates generally to rotating adjustment mechanisms, and
in particular, to locking adjustment knobs for actuating optical or electrical elements such as an
elevation adjustment knob for a sighting device, such as a riflescope, a telescope, other aimed
optical device.”); ‘429 Patent col. 1 ll. 15–20, ECF 92-1 (“The present disclosure relates to an
optical enhancing device, such as a telescopic observation sighting device or individual shoulder
(or hand-fired) firearms sighting device (telescopic sight herein). Embodiments described herein
may also be used with any optical enhancing device containing adjusters, such as a microscope,
telescope, etc.”).
DuFaux has a B.S. and M.S. in Mechanical Engineering and is a licensed professional

engineer. Conway Decl. Ex. B at 2, ECF 127-2. He has more than twenty years’ experience in
the field of mechanical engineering and industrial design. Id. at 1–2. This experience includes
developing advanced materials for warheads, id., working with microscope knobs and position
adjustment equipment, Conway Decl. Ex. F (“DuFaux Dep.”) at 13:12–19, ECF 127-7, and
designing “locking mechanisms for positional control systems,” DuFaux Dep. at 56:21–57:5.
DuFaux opines on the infringement and invalidity of mechanical devices related to
locking adjustment knobs. Not only does he have expertise as a professional engineer and
industrial designer—relevant fields given the basic mechanical nature of the devices at issue—
but he has specific experience with adjustment knobs and locking mechanisms. Given this
experience, as well as the basic mechanical principals at issue and the scope of his testimony,
DuFaux’s education and experience is sufficiently related to the pertinent art and will be both
relevant and useful to the jury. Thus, to the extent Leupold urges the Court to strike or otherwise
disregard his testimony, the Court declines to take such action.
Side Button Locking Patents

Leupold moves for summary judgment on five issues related to the ‘408 patent and the
‘068 patent (collectively, the “Side Button Locking Patents”). Nightforce moves for summary
judgment on one issue related to the ‘068 patent.
A. Infringement
i. Standards
A patent holder has the right “to exclude others from making, using, offering for sale, or
selling the invention throughout the United States or importing the invention into the United
States[.]” 35 U.S.C. § 154(a)(1). A party therefore infringes a patent if, “without authority,” it

“makes, uses, offers to sell, or sells any patented invention, within the United States or imports
into the United States any patented invention during the term of the patent[.]” 35 U.S.C. §
271(a).
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 (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 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.
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. For example, the inventor can describe different “embodiments” of the invention that
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. at 1316; Metabolite Lab., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354,
1360 (Fed. Cir. 2004). In these cases, “the inventor’s lexicography governs.” Phillips, 415 F.3d
at 1316.
Finally, 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. 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) (quoting Southwall Techs., Inc. v. Cardinal IG
Co., 54 F.3d 1570, 1575 (Fed. Cir. 1995)).
ii. ‘068

Both parties move for summary judgment on the issue of whether two Nightforce
turrets—the SA267 and SA271—infringe claims 1–3, 5–7, 12–13, and 15–18 of the ‘068 patent.1
The ‘068 patent contains one independent claim. This claim requires, in relevant part,
A locking adjustment device for adjusting a setting of a riflescope or other aiming
device, comprising:

a guideway including a slide surface extending around a rotational axis,
and a notch formed in the slide surface[.]

‘068 Patent col. 11 ll. 2–5.

At claim construction, the Court construed the term “around” to mean “on all sides of;
encircle.” Leupold & Stevens v. Lightforce USA, Inc., No. 3:16–cv–01570–HZ, 2018 WL

1 Nightforce also argues that Leupold cannot show infringement of claims 9 and 10.
648362, at *9 (D. Or. Jan. 31, 2018) (“Claim Construction Order”). Thus, the slide surface must
extend “on all sides of; encircle” a rotational axis.
Nightforce argues that neither accused device has a slide surface that extends “on all
sides of” or “encircles” the rotational axis of the turret. According to Nightforce, “a slide surface
is a surface where sliding happens (or at least can happen).” Def. Reply ‘068 at 2, ECF 133.

Thus, unless sliding occurs or can occur on all sides of a rotational axis, the slide surface does
not encircle the rotational axis. Leupold argues that Nightforce misidentifies the slide surface.
According to Leupold, “a slide surface is simply ‘the surface of a slide component.’” Pl. Resp.
‘068 at 4, ECF 122 (citations omitted). The question is therefore whether a “slide surface” may
include sections where no sliding occurs or can occur.
The Court agrees with Leupold that a slide surface does not require sliding to occur on
every part of the slide surface. Nightforce’s argument to the contrary relies entirely on analogy
and conclusory attorney argument. See Def. Reply ‘068 at 3 (arguing, without further
explanation, that Leupold’s interpretation “is not a plausible interpretation in the context of the

‘068 patent claims, because the claim construction for ‘around’ was made expressly in the
context of the words ‘slide surface’ and the rest of the claim.”). Nightforce fails, however, to
support its argument with any citation to the claims, the specification, or the patent’s prosecution
history.2 It also fails to cite any expert testimony. Given this lack of support, and Byron’s
opinion that “a person of ordinary skill in the art would understand the term ‘slide surface’ as the
surface of a slide component,” Byron Decl. Ex. 1 (“Byron Report”) ¶ 304, ECF 83-1, the Court

2 To the extent Nightforce suggested at oral argument that its position is supported by Claim 1’s
requirement that a guide tab be “biased against the slide surface,” the Court sees nothing in the
claim to suggest the guide tab must contact—or be biased against—all portions of the slide
surface.
cannot conclude that Nightforce’s narrow interpretation controls. See Phillips, 415 F.3d at 1313
(“[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[.]”); Thorner
v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 1367 (Fed. Cir. 2012) (“The
patentee is free to choose a broad term and expect to obtain the full scope of its plain and

ordinary meaning unless the patentee explicitly redefines the term or disavows its full scope.”).
a. SA271 Turret
Given this conclusion as to claim construction, the Court finds that each and every
limitation set forth in the identified claims appears in the SA271. Nightforce raises no arguments
to the contrary; it does not, for example, contest Byron’s testimony or dispute the physical
structure. Leupold therefore prevails on this narrow issue.
There is, however, the question of sales. The Court agrees with Nightforce that Leupold
has failed to provide any evidence that the SA271 has “been sold or offered for sale by

Nightforce in the United States at any time since the ‘068 patent issued on October 27, 2015.”
Def. Mot. Summ. J. on the ‘068 (“Def. Mot. ‘068”) at 12, ECF 89. Leupold does not provide the
Court with any evidence to the contrary. Instead, Leupold argues that Nightforce is still selling
the SA267 turret and complains that “Nightforce did not maintain and retain records that would
show when it sold out its inventory of scopes made with the older SA-271 knob design, or
records of which sales used which knob designs.” Pl. Resp. ‘068 at 6. Leupold fails to explain
the relevance of either argument, or provide any legal citation suggesting that Nightforce’s
liability hinges on its failure to maintain and retain records of its sales and inventory.
The Court also notes that, as the patentee, Leupold bears the burden of proving
infringement by a preponderance of the evidence.3 See Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 679 (Fed. Cir. 2008) (en banc). To meet its burden of proof, Leupold must “either
point to specific instances of direct infringement or show that the accused device necessarily
infringes the patent in suit.” Lucent Techns., Inc. v. Gateway, Inc., 543 F.3d 710, 723 (Fed. Cir.

2008) (no infringement of method claims where plaintiff failed to identity any specific instances
of direct infringement or show, with more than speculative, circumstantial evidence, that the
allegedly infringing software had ever actually run) (quoting ACCO Brands, Inc. v. ABA Locks
Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007)). Here, Leupold relies on a declaration from its
attorney Bryan Park. In this declaration, Mr. Park writes that, during a break in deposition
testimony, a Nightforce attorney stated that
Nightforce was not able to represent that riflescopes with the earlier-design SA-
271 turrets had not been sold after issuance of the ‘068 patent, because Nightforce
lacked records from its authorized dealers correlating its design change to the
sales of riflescopes utilizing the original vs. new turret designs. Mr. Casimir also
advised me that Nightforce does not know whether or not its authorized dealers
continued to sell riflescopes with the earlier SA-271 turret design after issuance of
the ‘068 patent due to how riflescopes were kept in inventory.

Park Decl. ¶ 3, ECF 119.
While Nightforce does not challenge this declaration, it does not change the analysis
here. It does not contradict the declaration provided by Nightforce, in which Klaus Johnson, a
30(b)(6) witness, states that, to the best of his knowledge, “Nightforce has not offered to sell or
sold the prior SA271 product with the curved edge stop collar at any time since” the ‘068 patent

3 To the extent Leupold argues that Nightforce may be liable for “inducing” dealers to infringe
by selling those scopes with the SA271 in their inventory after the ‘068 patent issued, Leupold
again cites no evidence that any dealers actually sold these scopes. See, e.g., Limelight Networks,
Inc. v. Akamai Techs., Inc., 572 U.S. 915, 922 (2014) (“[W]here there has been no direct
infringement, there can be no inducement of infringement under § 271(b).”).
was issued. Johnson Decl. ¶ 6, ECF 91. Instead, it simply confirms that Nightforce lacks sales
data from its authorized dealers. In other words, the Park declaration does not itself provide any
affirmative evidence to support Leupold’s position. Because Leupold has offered no evidence—
direct or circumstantial—that any scopes with the SA271 turret were sold after October 27, 2015,
it cannot meet its burden and Nightforce is entitled to summary judgment on this issue.

b. SA267 Turret
Even with the claim construction above, there are outstanding questions of fact as to
whether scopes with the SA267 turret infringe the ‘068 patent. While the parties do not dispute
the SA267’s physical structure, there is some dispute as to which part of that structure is properly
categorized as a slide surface. In other words, while the SA271 contains a single, unbroken
surface (with a notch) that extends around a rotational axis, the SA267 may contain two separate
surfaces: one (without a notch) that extends around a rotational axis and one (with a notch) on a
plane above the ring that does not extend around a rotational axis.

To illustrate:
a —
aS Slide
Surface
Notch

SA27I: Guideway

Notch :
Guideway

Slide
SA267: Bais

A different view of the SA267 shows this allegedly separate surface as well:

15- OPINION & ORDER

If, in fact, there are two separate surfaces, then infringement may not be warranted.
According to Nightforce, there is no contact between the pin and the lower, interior ring surface
that extends around the rotational axis. Instead, “[t]he only place the pin makes contact in the
SA-267 is on the straight tangent surface,” “which is in a different plane above the ring” and
does not extend around a rotational axis. Def. Reply ‘068 at 5 (emphasis in original). The “pin

does not extend down to or contact the [lower] surface4 . . . nor could it because th[at] surface . . .
is not exposed to and does not face the pin in the assembled product.” Id. Thus, the SA267 would
not contain “a guideway including a slide surface extending around a rotational axis, and a notch
formed in the slide surface[.]”
In making this argument, Nightforce relies on deposition testimony from Klaus Johnson,
a 30(b)(6) witness. The Court is not convinced, however, that Johnson testified to two distinct
surfaces. Johnson stated that
the pin doesn’t have any contact or ride anywhere on part 15 until the very end
portions of it to where the zero position is at. When the dial -- once you come
away from the zero position, the pin is essentially in space, an air gap during the
normal turret operation. And then when it comes to the zero point, there’s a
tangent surface, a straight line that the pin comes into, and then its depressed as
you rotate it into a zero position.

Pellikaan Decl. Ex. A (“Johnson Dep.”) 134:6–15, ECF 135-1. He also stated that “[t]he pin does
not contact the lower ring other than very near where the zero—where the notch is at.” Id. at
137:8–10. Thus, he does not clearly opine that there are two separate surfaces or that a pin never
contacts the lower interior ring surface. Given this ambiguity, and Byron’s conclusory opinion
that the “lock ring” contains “a guideway with a slide surface extending around a rotational axis
and surrounding it as one-piece structure, and has a notch formed in the slide surface,” Byron

4 This surface is highlighted with a “yellow ring” in Leupold’s briefing.
Decl. Ex. 3 (“Byron Supp. Report) ¶ 307, ECF 83-3,5 the Court finds there is an outstanding
question of fact. Summary judgment is therefore denied.
iii. ‘408
Leupold argues “that all Nightforce riflescopes with locking ZeroHold turrets . . . infringe

asserted claims 1, 3, 9, 10, 11, 12, 18, 19, 20, 21, 23, and 25 of the ‘408 patent.” Pl. Mot. 16. In
its response, Nightforce identifies elements in the asserted claims that are not found in the
accused products. In particular, Nightforce argues that the accused products do not contain a
mechanically driven locking mechanism as required by each ‘408 patent claim.6 See ‘408 Patent
col. 15 ll. 48–49, ECF 92-1 (“the button mechanically driving the locking mechanism”).
According to Nightforce, the term “‘mechanically driving’ requires a transfer of force from one
component to another and [] the accused products do not have this feature because the pin or tab
that Leupold has identified as meeting the claim requirement is integrally connected to the button
and moves together as one component (a technical point that is not in dispute).” Def. Resp. 21. In

other words, the parties appear to agree that the term “mechanically driving” requires the transfer
of force. See Byron Report ¶ 259 (concluding, in his infringement analysis, that the button on the
ZeroHold Turret “transfers mechanical force to move (mechanically drives) the pin or tab from
locked to unlocked conditions, under the ordinary and customary meaning of ‘mechanically
driving.’”); Brunette Decl. Ex. 47 (“DuFaux Rebuttal”) ¶ 56, ECF 92-7 (“Mechanically driving
requires a transfer of force from one component to another.”). According to Nightforce’s expert,

5 Byron also fails to distinguish between the clearly different structures of the SA267 and the
SA271 in this opinion.

6 In its briefing, Leupold addresses additional arguments raised in DuFaux’s expert report.
Because the Court finds that issues surrounding the term “mechanically driving” preclude
summary judgment, it declines to address any additional claim construction arguments at this
time.
however, a transfer of force cannot occur in a single structure. See DuFaux Rebuttal ¶ 56 (“If the
Zerohold pin or tab was considered a locking mechanism, the button cannot be said to
mechanically drive the locking mechanism as the Zerohold button and pin/tab are integrated as a
single structure and force is not transferred from the button to the pin or tab.”). Thus, there is a
dispute as to whether the required transfer of force necessitates a multicomponent structure, i.e.,

whether the locking mechanism and button must be separate structures.
Leupold argues that Nightforce raises only an issue of claim construction for the Court.
Moreover, according to Leupold, the Court already resolved this issue by rejecting Nightforce’s
proposed claim construction at the Markman hearing. While this Court previously rejected
proposed constructions for the terms “button” and “locking mechanism” that would limit these
terms to multicomponent structures, the Court did not construe the term “mechanically driving.”
If the Court were to construe the term “mechanically driving,” it may again determine that the
term does not require a multi-component structure. Leupold does not, however, present the Court
with a proposed construction or any argument to support a proposed construction.

At oral argument, Leupold expanded upon its limited briefing to argue that case law
shows that “two claim elements can be satisfied by one combined structure.” Transcript of Oral
Argument (“Oral Argument”) at 340. While this general premise may be correct, Leupold still
fails to address the specific claim limitations at issue here. See In re Papst Licensing Dig.
Camera Patent Litig., 778 F.3d 1255, 1262–64 (Fed. Cir. 2015) (relying on a detailed analysis of
the claim language and intrinsic record to find that the district court erred in defining “interface
device” to require a multi-component structure). At oral argument, for example, Leupold argued
generally that the “408 patent specification is general and does not make any contrary limitations
or disclaimers” that might require multiple structures. Oral Argument at 342. But again, Leupold
did not cite the claim language or specification, or attempt to explain why or whether
“mechanically driving”—and the transfer of force—in this specific patent does not require
separate structures.7 In fact, it ignored the term “mechanically driving” and Nightforce’s position
regarding the transfer of force between objects altogether. The Court cannot construe the term on
this conclusory and undeveloped briefing and argument. Thus, to the extent Nightforce has

merely identified a claim construction issue, neither party has offered sufficient argument to
resolve the issue. To the extent there is simply a factual issue—whether force is, in fact,
transferred in the ZeroHold design—the Court sees competing opinions between experts.
Summary judgment is therefore denied.
B. Invalidity
A patent issued by the Patent Trademark Office (PTO) is presumed valid. Microsoft
Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 95 (2011); 35 U.S.C. § 282. “To overcome this
presumption of validity, the party challenging a patent must prove facts supporting a

determination of invalidity by clear and convincing evidence.” Schumer v. Lab. Comp. Sys., Inc.,
308 F.3d 1304, 1315 (Fed. Cir. 2002).
i. Anticipation
Leupold argues that Nightforce cannot show the ‘068 and ‘408 are invalid as anticipated.

7 Leupold did suggest that the “embodiments of the patent include both a two-part structure,
where the button and the mechanically driven locking device are separate, and then a unitary
structure where the button and the locking element are fused.” Oral Argument at 379. Again,
Leupold did not explain this position or cite the patent or any expert testimony to support it.
Without any direction or citation, the Court cannot determine, at a minimum, which embodiment
Leupold intended to reference. The argument therefore remains undeveloped at this time.
a. Standards
“A patent is invalid for anticipation if a single prior art reference discloses each and every
limitation of the claimed invention.” Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377
(Fed. Cir. 2003). “Anticipation is a question of fact[.]” Atlas Powder Co. v. Ireco, Inc., 190 F.3d
1342, 1346 (Fed. Cir. 1999). “Typically, testimony concerning anticipation must be testimony

from one skilled in the art and must identify each claim element, state the witnesses’
interpretation of the claim element, and explain in detail how each claim element is disclosed in
the prior art reference. The testimony is insufficient if it is merely conclusory.” Schumer, 308
F.3d at 1315–16.
b. Canon XL-2 Video Camera
Leupold first argues that Nightforce has made no anticipation arguments related to claims
11 and 12 of the ‘408 patent and claims 9 and 10 of the ‘068 patent based on the Canon XL-2
video camera. See Byron Decl. Ex. 2 (“Byron Rebuttal”) ¶¶ 55–56, 73–74, 156, 168, ECF 83-2.

Because Nightforce does not respond to this argument, summary judgment as to these claims is
granted.
Leupold also argues that Nightforce cannot prove that claims 1, 3, 9, 10, 18–21, 23, and
25 of the ‘408 patent and claims 1, 5–7, 12, 13, and 15–18 of the ‘068 patent are anticipated by
the Canon XL-2 because the XL-2 “does not disclose required elements of the asserted claims.”
Pl. Mot. 19. Specifically, as to the ‘408, Leupold argues that
the Canon XL-2 video camera lacks a “spindle operatively coupled to an adjustable
[optical] portion of the optical device to thereby adjust the adjustable portion in
response to rotation of the spindle” (required by all asserted claims), as well as
additional required elements of certain asserted dependent claims, including a
knob “installed over the spindle” (claims 18-21, 25) and a knob “selectively
coupled to the spindle for selecting either rotation with the spindle or rotation
relative to the spindle” (claims 19-20).
Id. (citation omitted).
As to the ‘068, Leupold argues that

the Canon XL-2 video camera is not a “riflescope or other aiming device” as
required by all asserted claims, and also fails to disclose additional elements of
certain asserted dependent claims, including “a scale comprising indicia spaced
apart on a circumference of the knob to facilitate fine adjustments” (claim 17),
and “the locked position corresponds to a baseline position of the adjustable
setting” (claim 18).

Id. (citations omitted). In response, Nightforce argues that its expert opines that the XL-2
describes each element of the claimed invention and Leupold has simply identified questions of
fact.
As to the ‘408, the Court agrees with Nightforce. While Leupold’s expert may opine that
the Canon XL-2 lacks certain required elements, Nightforce’s expert opines that the XL-2 does,
in fact, disclose those very elements. Def. Resp. Ex. V (“DuFaux Report”) ¶¶ 172, 187, ECF
131-13. While Leupold argues, for the first time in reply, that Nightforce identifies issues of
claim construction rather than issues of fact, it fails to develop the argument. It does not, for
example, provide the Court with its proposed construction or support for that construction.
Instead, it merely states that “[u]nder the appropriate (legal) claim constructions of ‘operatively
coupled,’ ‘adjustable portion,’ and ‘installed over the spindle’ there is no dispute of fact,” and
cites its own claim construction briefing from 2017. Pl. Reply 15, ECF 147 (citation omitted).
The Court will not attempt to develop the parties’ arguments for them or construe three separate
phrases without further direction at this time. Summary judgment on this issue is therefore
denied.
As to the ‘068 patent, the Court again agrees with Nightforce. First, Nightforce has raised
a question of fact as to whether the Canon XL-2 discloses the limitations at issue. On claims 17
and 18, DuFaux states: “Claim 17 – the knob has indicia spaced apart on the circumferences to
facilitate fine adjustment to the desired setting; and Claim 18 – the power is “off” (baseline) on
the Camera when the button is in the locked (out) position.” DuFaux Report ¶ 173. While
Leupold, in its reply, argues that DuFaux fails to address elements from claims 17 and 18, it fails
to identify those elements or otherwise acknowledge DuFaux’s opinion.
Second, as to whether the Canon XL-2 is an aiming device, Leupold argues that the Court

“recognized on claim construction [that] an aiming device must aim some other device (such as a
telescope or projectile weapon), and a POSA would not view a video camera as an aiming device
for aiming something else.” Pl. Reply 18. The Court has reviewed its claim construction order
and sees no statement to this effect. Rather, it appears that Leupold is asking the Court to infer
this conclusion from its general discussion of various claim terms and patents. See Byron
Rebuttal ¶ 151 (“the Court repeatedly recognized the distinction between optical devices used
only for observation, such as a telescope or camera, and aiming devices or sighting devices,
which are attached to and used to point another device,” citing Claim Construction Order at 7–
10, 15–17). At claim construction, Leupold argued that the term “‘sighting’ . . . consistently

refers ‘to aim-assisting devices, such as for aiming a firearm or for aiming another device such as
a high-powered observation telescope.’” Claim Construction Order at *4 (emphasis omitted).
The Court ultimately “agree[d] with [Leupold] that a POSA would understand the term ‘sighting
device’ in the context of the ‘120 patent to mean an aim-assisting device.” Id.8 But this does not
equate to a general holding that “an aiming device must aim some other device.” While Leupold
may be correct—and an aiming device must aim some other device—with no argument as to

8 The Court fails to see the relevance of Leupold’s reliance on the Court’s construction of the
phrase “locking adjustment device for adjusting a setting of a riflescope or other aiming device,”
to mean “a securable adjuster of an aimed optical device.” Claim Construction Order at *8.
why this claim construction is appropriate, the Court cannot resolve the issue at this time.
Summary judgment is therefore denied.
c. Windauer ‘490 Application
Leupold argues that Nightforce cannot show that claims 1, 3, 11, 12, 18–21, 23, and 25 of

the ‘408 patent are anticipated by PCT Application WO2006/060490 (the “Windauer ‘490
application”).9 Specifically, Leupold argues that the “Windauer ‘490 application lacks ‘a button .
. . manually depressible transverse to the axis’ of rotation of the knob (required by all asserted
claims).” Pl. Mot. 20 (quoting Byron Rebuttal ¶¶ 82–90) (alteration in original). It also fails to
disclose “additional required elements of certain asserted dependent claims, including ‘an
actuator shaft attached to the button and extending from the button through a bore in the knob to
a position proximate the axis’ (claims 21, 25).” Id.
Nightforce, in response, argues that DuFaux opines “that the provisional application[]
disclose[s] . . . a button on the side.” Def. Resp. 22. The Court has reviewed Nightforce’s

citation to DuFaux’s report and sees no statement to this effect. See DuFaux Report ¶ 195.
Instead, DuFaux appears to opine that “[t]he position of the push button, whether transverse to
the axis or in any other position is an arbitrary design choice.” Id. Nightforce offers no argument
as to the relevance of this statement, or how it might impact the requirement that “a single prior
art reference [must] disclose[] each and every limitation of the claimed invention.” Schering
Corp., 339 F.3d at 1377.10

9 Leupold also argues that Nightforce has not offered any anticipation arguments related to the
‘068 patent or claims 9 and 10 of the ‘408 patent based on the Windauer ‘490 application.
Because Nightforce does not respond to this argument, summary judgment on this narrow issue
is granted.

10 Nightforce also provides no argument as to the relevance of DuFaux’s position that “[t]he
Provisionals that the ‘490 Windauer PCT claims priority to (60/632,331 and 60/638,561)
Nightforce also argues that the “missing elements” from claims 21 and 25 are “clearly
described in Figure 7A and 7B of the Windauer publication.” Def. Resp. 22. Again, the Court
sees no statement to this effect in the citation to DuFaux’s report. See DuFaux Report ¶ 195. To
the extent Nightforce asks the Court to simply examine the Windauer publication itself, the
Court cannot determine, without assistance from any expert or some direction from the attorneys,

how or whether Figures 7A and 7B show “an actuator shaft attached to the button and extending
from the button through a bore in the knob to a position proximate the axis.” ‘408 Patent col. 17
ll. 25–26, col. 18 ll. 47–49; see Schumer, 308 F.3d at 1315–16 (“Typically, testimony concerning
anticipation must be testimony from one skilled in the art and must identify each claim element,
state the witnesses’ interpretation of the claim element, and explain in detail how each claim
element is disclosed in the prior art reference.”). With only Byron’s testimony to the contrary,
the Court finds that Nightforce cannot meet its burden to prove anticipation as to the Windauer
‘490. Summary judgment is therefore granted.

ii. Obviousness
A claimed invention is obvious if “the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as a whole would have been obvious
at the time the invention was made to a person having ordinary skill in the art[.]” 35 U.S.C. §
103(a) (pre-AIA). “To qualify as prior art for an obviousness analysis, a reference must qualify
as ‘analogous art,’ i.e., it must satisfy one of the following conditions: (1) the reference must be
from the same field of endeavor; or (2) the reference must be reasonably pertinent to the
particular problem with which the inventor is involved.” K-TEC, Inc. v. Vita-Mix Corp., 696

describe the use of button generically, independent of position.” DuFaux Report ¶ 195. Without
this explanation, the Court cannot conclude that the Windauer Publication itself discloses each
and every limitation of the ‘408 patent.
F.3d 1364 (Fed. Cir. 2012). “A reference is reasonably pertinent if it, as a result of its subject
matter, ‘logically would have commended itself to an inventor’s attention in considering his
problem.’” Id. (quoting Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed.
Cir. 2011)).
While obviousness is ultimately a legal conclusion, it is “based on underlying factual

determinations.” Eisai Co. Ltd. v. Dr. Reddy’s Lab., Ltd., 533 F.3d 1353, 1356 (Fed. Cir. 2008).
“The factual determinations underpinning the legal conclusion of obviousness include 1) the
scope and content of the prior art, 2) the level of ordinary skill in the art, 3) the differences
between the claimed invention and the prior art, and 4) evidence of secondary factors.” Id. (citing
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Secondary factors include “commercial
success, long felt but unsolved needs, failure of others, etc.” KSR Int’l Co, 550 U.S. at 406
(quoting Graham, 353 U.S. at 17–18.). Summary judgment may therefore be appropriate if “the
content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are
not in material dispute, and the obviousness of the claim is apparent[.]” Id. at 427.

“[A] patent composed of several elements is not proved obvious merely by demonstrating
that each of its elements was, independently, known in the prior art.” Id. at 418. If, however, “a
person of ordinary skill in the art can implement a predictable variation, and would see the
benefit of doing so, § 103 likely bars its patentability.” Id. at 417. As the Supreme Court has
observed:
When there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense.

Id. at 421. In other words, the results of ordinary innovation are not patentable. Id. at 427.
In determining obviousness, courts do not need to find “precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at 418. A person of
ordinary skill interprets the prior art “using common sense and appropriate perspective.”
Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed. Cir. 2011) (citing KSR Int’l Co.,

550 U.S. at 421).
Here, Leupold argues that Nightforce cannot prevail on a prima facie case of obviousness
because (1) DuFaux is not a POSA, (2) the Canon XL-2 video camera is non-analogous art, and
(3) as to the ‘408 patent, all of DuFaux’s identified references are missing a “‘button . . .
manually depressible transverse to the axis’ of rotation of the knob, a feature required by all
asserted claims of the ‘408 patent.” Pl. Mot. 20.
First, as stated above, DuFaux may testify as a POSA on issues related to the ‘408 and
‘068. Second, any argument as to whether the Canon XL-2 is non-analogous art is insufficiently
developed at this time. Leupold relies on its expert Byron. Byron opines broadly that all patents

in this case “limit[] or indicate[] that the inventions are for firearms devices.” Byron Rebuttal ¶
31. He also opines that “[a] person skilled in the art of riflescope and weapon aiming device
design would have no reason to look to and would not look to video cameras and their
adjustment dial and rings as a source for functional adjustment elements for many reasons.” Id.
at ¶¶ 175–78.
Nightforce, in turn, argues that the claims at issue are not directed to riflescopes. Rather,
the ‘408 claims are “directed to an optical device,” and the ‘068 claims are directed to “an aimed
optical device.” Def. Resp. 23, 26. With regard to the ‘408, Nightforce identifies two claims that
refer to the invention as an optical device: claim 1 (“adjustment device for an optical device”)
and claim 12 (“An optical device . . .”). Id. at 23. Nightforce also points to a description in the
preferred embodiments: “[w]hile the following description [of Figure 3] is made with reference
to a riflescope, the autolocking device may be used with other devices, including optical devices
such as binoculars, spotting scopes or other sighting devices, weapon aiming devices,
microscopes, or other suitable optical devices.” Oral Argument at 495; ‘408 Patent col. 4 ll. 9–

14. With regard to the ‘068, Nightforce argues that “the Court construed the relevant claim
language reciting those words [i.e., a locking adjustment device for adjusting a setting of a
riflescope or other aiming device] to mean ‘a securable adjuster of an aimed optical device,’ not
limited to weapons.” Def. Resp. at 26. Nightforce offers no further explanation or expert
testimony to support these arguments.
Neither party applies or even references the applicable test. See, e.g., In re Clay, 966 F.2d
656, 658–59 (Fed. Cir. 1992) (“Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the

reference still is reasonably pertinent to the particular problem with which the inventor is
involved.”); Airbus S.A.S. v. Firepass Corp., 941 F.3d 1374, 1380 (Fed. Cir. 2019) (“To
determine the applicable field of endeavor, the factfinder must consider explanations of the
invention’s subject matter in the patent application, including the embodiments, function, and
structure of the claimed invention . . . . [T]he factfinder must [also] consider each reference’s
disclosure in view of the reality of the circumstances, and weigh those circumstances from the
vantage point of the common sense likely to be exerted by one of ordinary skill in the art in
assessing the scope of the endeavor.”) (citations omitted).
To the extent the Court can infer a dispute as to the field of endeavor, the dispute cannot
be resolved on the current record. As outlined above, Leupold has cited a single statement from
Byron that all patents relate to firearms devices. See Byron Rebuttal ¶ 31. Leupold does not
identify, at a minimum, any language from the patent at issue. In other words, while Byron
explains at length why a POSA would not look to the Canon XL-2 when designing a riflescope,

Leupold provides no support for its position that ‘408 and ‘068 are, in fact, directed to
riflescopes. Similarly, Nightforce’s argument as to the ‘408 appears to hinge on three phrases
referencing optical devices. Yet Nightforce also fails to provide the Court with any argument or
testimony as to how or why these phrases are relevant to or define the field of endeavor. Given
this lack of argument or support from either party, the Court cannot make any finding as to
whether the Canon XL-2 is analogous art.11
Finally, as to the ‘408 patent and the missing references to a “‘button . . . manually
depressible transverse to the axis’ of rotation of the knob,” Leupold does not address or even
acknowledge DuFaux’s opinion that the references provide for a button and the position of that

button is an arbitrary design choice. See e.g., DuFaux Report ¶ 195. With no further argument,
the Court sees only a conclusory dispute between experts. Summary judgment is therefore
denied.

11 Leupold also argues, for the first time in reply, that “Nightforce has offered no analysis or
evidence of which other prior art it proposes to combine with [the] Canon XL-2 camera, much
less how or why a POSA might modify the Canon XL-2 to address the missing claim elements
discussed” in its briefing on anticipation. Pl. Reply 15. The Court did not find that Leupold was
entitled to summary judgment on the issue of anticipation; whether certain elements are missing
from the Canon XL-2 is therefore not established at this time. Additionally, to the extent Leupold
argues, again for the first time in reply, that DuFaux “engaged in hindsight during his
obviousness analysis,” Pl. Reply 16, for the reasons stated below, the Court does not agree.
iii. 35 U.S.C. § 112
Leupold moves for summary judgment on Nightforce’s invalidity assertions under 35
U.S.C. § 112. Leupold argues only that because DuFaux lacks skill in the art, Nightforce cannot
carry its burden on the issue. For the reasons stated above, DuFaux may testify as a POSA. The
motion is therefore denied.

Windauer Patents
Both parties move for summary judgment on issues related to the ‘429 patent, the ‘736
patent, and the ‘120 patent (collectively, the “Windauer patents”).
A. Infringement
Leupold argues that Nightforce riflescopes with the Rotary Brake Turret and ZeroHold
Turret infringe the asserted claims.
i. Rotary Brake Turrets
Leupold argues that the Nightforce Rotary Brake Turrets infringe (1) claims 1, 2, 6, 8–10,

12–14, and 19 of the ‘429 patent; (2) claims 1, 2, 4, 7, 10, and 14 of the ‘736 patent; and (3)
claims 1–6, 10–12, 14, 15, and 17–24 of the ‘120 patent.
In response, Nightforce argues that the Rotary Brake Turrets do not “lock” as required by
each independent claim. See DuFaux Rebuttal ¶¶ 44, 48; ‘736 Patent col. 10 ll. 46–59 (a locking
mechanism with two portions, “the second portion selectively movable between locked and
unlocked positions such that when the second portion is in the locked position the first and
second portions are engaged so as to restrain the actuator from rotation about the axis of rotation
and when the second portion is in the unlocked position the first and second portions are
disengaged so that the actuator is rotatable about the axis of rotation for adjusting the setting of

the sighting device.”); ‘120 Patent col. 11 ll. 5–12 (“a lock mechanism including: a first lock
element fixed relative to the sighting device; and a second lock element selectively movable
relative to the first lock element, wherein the first and second lock elements engage one another
in a locked position to restrain rotation of the adjustment knob about the rotational axis[.]”); ‘429
Patent col. 10 ll. 44–49 (“the adjustment member being adjustably positionable about the axis of
rotation when each engagement member does not engage an engagement surface, and the

adjustment member being locked in a selected position about the axis of rotation when at least
one engagement member engages an engagement surface.”).
According to Nightforce, the Court’s construction of the term “selectively moveable” /
“the second portion selectively moveable between locked and unlocked positions” is
determinative. See Claim Construction Order at *5–6. The Court construed the phrase to mean
that “the second portion is moveable by a user between a first position where it is unable to be
rotated about the axis of rotation relative to the firearm.” Id. Nightforce therefore argues there is
no infringement because the turrets will rotate when sufficient force is applied; thus, the Rotary
Brake Turrets do not lock.

Leupold disputes this construction of “locked.” Leupold first argues the Windauer patents
do not require “turrets that are impossible to turn when attacked with intentional and forcible
rotation.” Pl. Mot. 28 (emphasis omitted). In other words, as stated at oral argument, the Court
understands Leupold to argue that “locked” should not mean “unable to be rotated” but rather
“‘secured in place’ for purposes of preventing against an inadvertent or accidental adjustment.”
Oral Argument at 380. Leupold also argues that the Rotary Brake Turrets do not, in fact, rotate
when locked without breaking.
Leupold’s argument that “locked” should mean “secured in place for purposes of
preventing against an inadvertent or accidental adjustment,” is unpersuasive. At claim
construction, Leupold and Nightforce jointly proposed a definition that defined a “locked
position” as a position where the turret “is unable to be rotated about the axis of rotation” and an
“unlocked position” as a position where the turret is “able to be rotated about the axis of
rotation.” See Claim Construction Order at *5–6. The Court simply adopted the proposed
definitions. These definitions are supported by the patents’ specification: each patent describes a

“locking turret knob assembly [] in [a] locked position, as shown in FIG. SA, thereby rendering
index ring 504 unable to be rotated about axis of rotation.” ‘429 Patent col. 7 ll. 47–49; ‘736
Patent col. 7 ll. 47–49; ‘120 Patent col. 8 ll. 2–4 (emphasis added). Leupold offers no
explanation for its change of position or argument for why the term should not be consistently
construed throughout the patent. See Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed.
Cir. 2001) (“[A] claim term should be construed consistently with its appearance in other places
in the same claim or in other claims of the same patent.”).
To the extent Leupold relies on the “intrinsic record” to support its new position, Leupold
cites only the introduction to the detailed description of preferred embodiments:

According to one embodiment, an adjustment knob is provided for an optical
setting, such as elevation, windage, parallax, or illuminated reticle power control
of an optical-based instrument, such as a telescopic sighting system, a telescope or
a microscope, that is mechanically lockable and weather proof, thereby
eliminating inadvertent adjustment of an optical setting by accidental physical
contact. Accordingly, the user may mechanically unlock the adjustment knob to
make a desired adjustment of an optical or power setting. Thus, optical or power
settings made by a user are reliably maintained regardless of the environmental
conditions or whether the adjustment knob is accidentally touched.

‘120 Patent col. 4 ll. 17–29; ‘429 Patent col. 4 ll. 6–17; ‘736 Patent col. 4 ll. 6–17 (emphasis
added). The Court sees no conflict, however, between this statement of purpose and the Court’s
definition of locked; a knob that is unable to be rotated when locked would also prevent
inadvertent adjustments by accidental physical contact.
To the extent Leupold relies on Kaneka Corp. v. Xiamen Kingdomway Group Co., the
case is readily distinguishable. In Kaneka Corp., “the district court construed the term ‘sealed
tank’ to mean ‘a tank that is closed to prevent the entry or exit of materials.’” 790 F.3d 1298,
1304 (Fed. Cir. 2015). The Federal Circuit reversed, finding this construction “inconsistent with
the intrinsic record.” Id. In particular, the district court’s construction ignored two figures, both

of which “suggest that the ‘sealed tank’ should be sealed to the atmosphere, but not necessarily
to other materials, such as solvents.” Id. In particular, Example 8 depicted “solvent flowing into
and out of the extraction tanks[;]” thus “the specification indicates that the ‘sealed tank’ is not
sealed to prevent entry or exit of all materials.” Id. The Federal Circuit reiterated that “[a] claim
construction that excludes a preferred embodiment is rarely, if ever, correct.” Id. Moreover, “[a]
construction that excludes all disclosed embodiments, such as the district court’s construction of
the term ‘sealed tank,’ is especially disfavored.” Id. Here, Leupold identifies no embodiment that
would be excluded by the Court’s construction. As noted above, even the identified statement of
purpose is consistent with the Court’s construction. Thus, at this time, with no additional
evidence or support, the Court cannot conclude that Leupold’s proposed definition is correct.12

12 To the extent Leupold raises an alternative argument that “locked” must be understood “under
conditions of ordinary use,” the current record is unpersuasive. Leupold does not explain in its
briefing what it means by “ordinary use.” At oral argument, Leupold appeared to argue that
“ordinary use” means “using a finger grip” to turn the knob. Oral Argument 324. Leupold cites
no support or evidence for this position. Similarly, Leupold provides no citation (or additional
explanation) for its position that “a POSA would understand that the claimed locking turret knob
prevents rotation under conditions of ordinary use.” See Pl. Mot. 22. Even if the term should be
read in the context of ordinary use—thereby excluding movement through “extraordinary force”
such as a torque wrench—the Court notes that there is a question of fact as to whether the knob
can be rotated with hand strength alone. See DuFaux Rebuttal ¶ 39; Oral Argument at 353
(arguing that DuFaux’s measurements suggest that normal hand strength could be used to turn
the knob but acknowledging that Byron’s measurements would require something more).
The Court agrees, however, that knobs that rotate when broken may still infringe the
asserted claims as construed. But there is a question of fact as to whether the Rotary Brake
Turrets only rotate while locked when broken. DuFaux opines, for example, that he could
overcome the engaged mechanism with a maximum force of 2.1 to 4.6 Nm. DuFaux Rebuttal ¶
39. This force could be exerted through hand strength alone. Id. And, at these levels, “none of the

Nightforce Rotary Break [sic] turrets were damaged or otherwise compromised during the
testing.” Id. at ¶ 41. Byron opines, however, that he could not rotate the knob by hand. Byron
Decl. II at ¶ 10, ECF 129.13 He could only rotate the knob by using a torque meter that required
about three times more torque than Mr. DuFaux measured. Id. at ¶ 21. Moreover, he believed the
knob turned only after the “locking mechanism failed;” a “sudden and catastrophic” event. Id.
After the mechanism failed, the knob turned easily in the locked position. Id. Byron therefore
concluded that DuFaux tested a riflescope with a broken lock. Id. While Nightforce attempts to
argue that Byron fails to definitively show that the rotating knob was actually broken, this
inference is reasonable given Byron’s observations that the locking mechanism’s “failure was

sudden and catastrophic” and the “turret knob now turns easily, in the locked position.” Id. In the
light most favorable to the non-moving party, there is therefore a question of fact and summary
judgment is denied.

13 In its reply, Nightforce asks the Court to strike Byron’s second declaration as untimely. The
Court declines to do so. While Nightforce asserts the declaration was disclosed on October 26,
2018, well after the final expert report deadline of September 10, 2018, Leupold has supplied
reasonable justification for the delay, and Nightforce has failed to identify any harm or prejudice.
See Fed. R. Civ. P. 37(c)(1) (late filed reports may be excluded unless the failure to timely
produce “was substantially justified or is harmless.”). Byron’s declaration responds to DuFaux’s
expert report filed on September 10, 2018, and, according to Leupold, to relevant facts uncovered
at Mr. DuFaux’s September 27, 2018 deposition. Oral Argument at 334.
ii. ZeroHold Turrets
Leupold argues that Nightforce’s BEAST and ATACR riflescopes with ZeroHold Turrets
infringe (1) claims 1, 4, 5, 9, 10, 12, and 15 of the ‘429 patent; (2) claims 1, 2, 7, and 14 of the
‘736 patent; and (3) claims 1–3, 5, 6, 11, 12, and 17–24 of the ‘120 patent. Additionally, (1)
BEAST and ATACR riflescopes with the SA271 ZeroHold Turret infringe claim 3 of the ‘736

patent and 7, 8, and 13 of the ‘120 patent and (2) BEAST and ATACR riflescopes with the
SA267 ZeroHold Turret infringe claims 7 and 8 of the ‘120 patent.
Nightforce argues only that “Leupold’s motion fails as it relates to non-infringing
government sales and does not specify what scope models allegedly infringe.” Def. Resp. 28. As
discussed in a previous Opinion & Order, the Court denied both parties’ motions for summary
judgment on the affirmative defense of government sales under 28 U.S.C. § 1498. See Leupold &
Stevens v. Lightforce USA, Inc., No. 3:16–cv–01570–HZ, 449 F.Supp.3d 1015 (D. Or. Mar. 29,
2020). Nightforce also offers no citation or explanation to support its position that Leupold must
specify which “scope models allegedly infringe.” Def. Resp. 28. Given the information above,

Leupold has sufficiently identified the scopes and turrets that are alleged to infringe; Nightforce
makes no argument that it does not and cannot know which turrets and riflescopes are at issue.
Thus, to the extent Nightforce does not prevail on its § 1498 defense at trial, the Court grants
summary judgment as to infringement here.
B. Anticipation
Both parties move for summary judgment on issues related to anticipation.
i. Priority Date
The Windauer patents claim priority under 35 U.S.C. § 119(e) to U.S. Provisional Patent

Application No. 60/632,331 (the “Windauer Provisional”), filed on November 30, 2004. Leupold
concedes, however, that claims 13 and 14 of the ‘429 patent, claim 10 of the ‘736 patent, and
claims 4, 11, 14, 15, and 20 of the ‘120 patent “recite subject matter not described in the
Windauer Provisional.” Pl. Mot. 24. The question is therefore whether the remaining claims—
claims 1, 2, 4–6, 8–10, 12, 15, and 19 of the ‘429 patent; claims 1–4, 7, and 14 of the ‘736
patent; and claims 1–3, 5–8, 10, 12, 13, 17–19, and 21–24 of the ‘120 patent—are entitled to

claim priority from the filing date of the provisional application.
“For a patent to claim priority from the filing date of its provisional application, it must
satisfy 35 U.S.C. § 119(e)(1) (2006).” Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800
F.3d 1375, 1378 (Fed. Cir. 2015). The Federal Circuit has “made clear that under section
119(e)(1), ‘the specification of the provisional must “contain a written description of the
invention and the manner and process of making and using it, in such full, clear, concise, and
exact terms,” 35 U.S.C. § 112 ¶ 1, to enable an ordinarily skilled artisan to practice the invention
claimed in the non-provisional application.’” Purdue Pharma L.P. v. Iancu, 767 F. App’x 918,
923 (Fed. Cir. 2019) (quoting New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290,

1294 (Fed. Cir. 2002) and citing Dynamic Drinkware, 800 F.3d at 1378); see also Amgen Inc. v.
Sanofi, 872 F.3d 1367 (Fed. Cir. 2017) (same).
To satisfy the written description requirement, the “prior application itself must describe
an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing date sought.” Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
1316, 1331–32 (Fed. Cir. 2008).
To satisfy the enablement requirement, “the specification must teach those skilled in the
art to make and use the full scope of the claimed invention without undue experimentation.”
Genentech, Inc. v. Novo Nordisk, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (emphasis added); Sitrick
v. Dreamworks, LLC, 516 F.3d 993, 999 (Fed. Cir. 2008). Enablement is a question of law based
on underlying factual determinations. Storer v. Clark, 860 F.3d 1340, 1345 (Fed. Cir. 2017).
“Whether undue experimentation is required is not a single, simple factual determination, but
rather is a conclusion reached by weighing many factual considerations.” Id. (quotation

omitted). “[R]elevant factors may ‘include (1) the quantity of experimentation necessary, (2) the
amount of direction or guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art,
(7) the predictability or unpredictability of the art, and (8) the breadth of the claims.’” Id.
(quoting In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)).14
“The court analyzes this issue on a claim-by-claim basis.” D Three Enterprises, LLC v.
Rillito River Solar LLC, 2017 WL 1023389 at *4 (D. Colo. March 15, 2017). “An asserted claim
must be entirely supported by the parent application’s disclosure; the Federal Circuit does not
parse a claim into supported and unsupported portions.” Id.

14 In support of its conclusory argument on this issue, Leupold has suggested that “it is not
Leupold’s burden at summary judgment to address the Wands factors. If Nightforce chooses to
make its case on its affirmative defense using the Wands factors, it’s free to do so, but that
doesn’t count against our motion.” Oral Argument at 503. While Leupold is correct that
Nightforce ultimately bears the burden of persuasion on its invalidity defenses, Leupold has the
burden of production on the issue of whether “the asserted claim[s are] entitled to the benefit of a
filing date prior to the alleged prior art.” Tech. Licensing Corp., 545 F.3d at 1327. This means
that Leupold must “show not only the existence of the earlier application, but why the written
description in the earlier application supports the claim.” Id. In other words, Leupold must
produce “sufficient evidence and argument to show that” the provisional application supports all
limitations of the asserted claims. Id. (emphasis added). The Court sees only a few conclusory
sentences from Byron that a POSA “could have made and used” the invention with “no more
than the minimal testing and revisions customary to skilled work in this field, and without undue
experimentation,” e.g., Byron Rebuttal ¶ 216. It offers no further argument from either the expert
or the attorneys. As this Court has repeatedly stated, it will not develop the parties’ arguments for
them.
Leupold, via expert Byron, argues that a person of ordinary skill in the art would
recognize that Mr. Windauer possessed the subject matter of the claims at issue by the time the
Windauer Provisional was filed. See Byron Rebuttal ¶¶ 194–222. Nightforce, in turns, relies on
expert DuFaux to argue there is a question of fact as to “whether the missing claim terms find
adequate written description support in the Provisionals under 35 U.S.C. §§112, 119.” Def.

Resp. 29.
The Court has reviewed DuFaux’s report. The Court agrees with Leupold that certain
statements appear irrelevant to the priority analysis. For example, DuFaux opines, without
explanation or analysis, that certain words from the patents’ claims do not appear in the
provisional. See, e.g., DuFaux Report ¶ 202 (“I did not see that the terms ‘first lock element’ or
‘second lock element’ appeared anywhere in the ‘490 PCT application, and instead were first
introduced into the ‘120 claims … in a Preliminary Amendment dated June 3, 2016”). But “the
earlier application need not describe the claimed subject matter in precisely the same terms as
found in the claims at issue . . . the prior application must [simply] convey with reasonable

clarity to those skilled in the art that, as of the filing date sought, the inventor was in possession
of the invention.” Tech. Licensing Corp., 545 F.3d at 1331–32.15
Leupold is also correct that DuFaux does not state, in these exact terms, that a POSA
would not recognize that Mr. Windauer invented what was claimed. DuFaux does opine,
however, that the ‘736 and ‘120 claims lack written description support as Mr. Windauer himself
did not possess certain limitations when the application was filed. DuFaux Report ¶¶ 201–02.16

15 To the extent these statements may, in fact, be relevant to the written description analysis,
Nightforce provides no argument, explanation, or legal citation to support this relevancy.

16 To the extent Leupold challenges this opinion by arguing generally that a limited disclosure in
the provisional application may be adequate when it shows the inventor possessed the claimed
He also opines that, given the limited examples in the specification, the Windauer Provisional
does not provide sufficient detail “to allow one of skill in the art to make and use” the broad
claims in the Windauer Patents without “undue experimentation.” DuFaux Report ¶¶ 200–02.
Leupold does not provide the Court with any argument as to whether the Windauer
Provisional enables the broad patent claims and would allow a POSA to practice the claimed

invention without undue experimentation. Instead, Leupold argues, as a general matter, that “[a]n
applicant is not required to describe in the specification every conceivable and possible future
embodiment of his invention,’” Cordis Corp. v. Medtronic AVE, Inc., 339 F.3d 1352, 1365 (Fed.
Cir. 2003), and that “Nightforce’s arguments rest on an erroneous legal premise, that claims lack
support if they encompass undisclosed embodiments,” Pl. Reply 24. While the Court agrees with
this general principle, the Court does not agree with this framing of Nightforce’s argument. It is
not a question of whether the specification fails to disclose certain embodiments, but whether the
Provisional’s specification would enable a POSA to make and use the full scope of the broader
patent claims without undue experimentation. See MagSil Corp. v. Hitachi Glob. Storage Techs.,

Inc., 687 F.3d 1377, 1380–81 (Fed. Cir. 2012) (“Enablement serves the dual function in the
patent system of ensuring adequate disclosure of the claimed invention and of preventing claims
broader than the disclosed invention. This important doctrine prevents both inadequate
disclosure of an invention and overbroad claiming that might otherwise attempt to cover more
than was actually invented. Thus, a patentee chooses broad claim language at the peril of losing
any claim that cannot be enabled across its full scope of coverage. The scope of the claims must

subject matter, Leupold offers no explanation as to why or how the Windauer Provisional shows
that Mr. Windauer possessed the claimed subject matter. See Pl. Reply 23 (arguing only that “a
limited disclosure in the provisional application is adequate where — as here — it shows that the
inventor had possession of the claimed subject matter.”).
be less than or equal to the scope of the enablement to ensure that the public knowledge is
enriched by the patent specification to a degree at least commensurate with the scope of the
claims.”) (citations omitted); see also In re Goodman, 11 F.3d 1046 (Fed. Cir. 1993) (Noting that
“the specification must teach those of skill in the art how to make and how to use the invention
as broadly as it is claimed” and concluding that a “single example” provided in the specification

did not “contain sufficient information to enable the broad scope of the claims”); Sitrick, 516
F.3d at 999 (“The scope of the claims must be less than or equal to the scope of
the enablement to ensure that the public knowledge is enriched by the patent specification to a
degree at least commensurate with the scope of the claims.”).
In other words, while Leupold supplies an accurate quote from Cordis Corp., this quote
does not speak to the enablement opinion at issue here—whether the specification teaches “those
skilled in the art to make and use the full scope of the claimed invention without undue
experimentation.” Genentech, Inc., 108 F.3d at 1365. Leupold does not acknowledge, much less
challenge, DuFaux’s enablement opinions,17 or identify any uncontested claims or limitations.

With no further argument or development of the facts or legal analysis, the Court cannot
conclude that Leupold is entitled to summary judgment at this time.
ii. Invention Date
Under 35 U.S.C. § 102(a), a person is not entitled to a patent when “the invention was
known or used by others in this country, or patented or described in a printed publication in this
or a foreign country, before the invention thereof by the applicant for patent.” In other words,

17 At oral argument, Leupold attempted to address, for the first time, DuFaux’s enablement
opinions by asking the Court to look at figures from the Provisional, which its attorneys argued
“meet[] the enablement standard.” Oral Argument at 460. The Court cannot conclude, on this
limited attorney argument, that DuFaux’s expert opinions lack merit.
prior art may render a patent invalid. See Schering Corp., 339 F.3d at 1377 (“A patent is invalid
for anticipation if a single prior art reference discloses each and every limitation of the claimed
invention.”).
After a prior art reference has been identified, the patentee may attempt to establish an
earlier date of invention. Mahurkar v. CR Bard, Inc., 79 F.3d 1572, 1576–77 (Fed. Cir. 1996).

“To antedate (or establish priority) of an invention, a party must show either an earlier reduction
to practice, or an earlier conception followed by a diligent reduction to practice.” Purdue
Pharma L.P. v. Boehringer Ingelheim GMBH, 237 F.3d 1359, 1365 (Fed. Cir. 2001).
“Conception and reduction to practice are questions of law, based on subsidiary findings of fact.”
Id. (citing Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986)).
“Conception requires proof that the inventor formed in his mind ‘a definite and
permanent idea of the complete and operative invention, as it is hereafter to be applied in
practice,’ and that the idea be ‘so clearly defined in the inventor’s mind that only ordinary skill
would be necessary to reduce the invention to practice, without extensive research or

experimentation.’” Id. (quoting Burroughs Wellcome Co. v. Barr Labs., Inc., 40 F.3d 1223, 1228
(Fed. Cir. 1994)).
“Reduction to practice follows conception.” Mahurkar, 79 F.3d at 1579. “To establish an
actual reduction to practice,” Leupold “must establish three things: “(1) construction of an
embodiment or performance that met all the limitations of the interference count; (2)
determination that the invention would work for its intended purpose, and (3) the existence of
sufficient evidence to corroborate inventor testimony regarding these events.” Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1169 (Fed. Cir. 2006) (alterations and quotation marks omitted)
(quoting Cooper v. Goldfarb, 154 F.3d 1321, 1327 (9th Cir. 1998).
Whether sufficient evidence corroborates an inventor’s testimony is a question of fact. Id.
at 1171. “Sufficiency of corroboration is determined by using a ‘rule of reason’ analysis, under
which all pertinent evidence is examined when determining the credibility of an inventor’s
testimony.” Id. at 1170. “Although each case must be decided in view of its own facts, the
determination is not utterly unstructured.” Sandt Tech Ltd. v. Resco, 264 F.3d 1344, 1350 (Fed.

Cir. 2001). “Documentary or physical evidence that is made contemporaneously with the
inventive process provides the most reliable proof that the inventor’s testimony has been
corroborated.” Id. at 1350–51. “Circumstantial evidence about the inventive process, alone, may
also corroborate,” as will “oral testimony of someone other than the alleged inventor” Id. at
1351.
“Under the rule of reason, the evidence must be considered as a whole, not individually.”
NFC Tech., LLC v. Matal, 871 F.3d 1367, 1372 (Fed. Cir. 2017) (quotation marks and citations
omitted). “The law does not impose an impossible standard of ‘independence’ on corroborative
evidence by requiring that every point of a reduction to practice be corroborated by evidence

having a source totally independent of the inventor.” Medichem, SA, 437 F.3d at 1171 (quoting
Cooper, 154 F.3d at 1330). “Thus, an inventor’s conception can be corroborated even though no
one piece of evidence in and of itself establishes that fact and even through circumstantial
evidence.” NFC Tech., 871 F.3d at 1372 (citations and quotation marks omitted).
Leupold argues that Mr. Windauer conceived of the locking turret knob before May 2004
and “physically reduced to practice his invention between April 27 and May 17, 2004[.]” Pl.
Mot. 26. This argument relies on Mr. Windauer’s own testimony and the following evidence:
(1) Emails between Mr. Windauer and Schmidt & Bender (“S&B”), sent between
April 21, 2004 and May 17, 2004;

(2) A “final invoice” attached to a May 17, 2004 email;
(3) June 2004 emails between Mr. Windauer and S&B;
(4) A set of six drawings, including an assembly drawing bearing production
number L&S068439 (the “‘439 Assembly Drawing”), showing a locking
turret knob;

(5) A set of four drawings showing a locking illumination knob; and

(6) A declaration from machinist David Larsen.

No single piece of evidence corroborates Mr. Windauer’s testimony or independently
establishes an invention date. For example, while the April and May emails reference a prototype
for a “short-dot turret” and a “short dot windage and elevation Knob Prototype” (presumably the
same prototype), they provide no information as to what that prototype looked like or whether it
demonstrated all claimed limitations. See Brunette Decl. Ex. 25–26, ECF 92. While Leupold
argues the June emails suggest the prototype was a locking knob with locking pins that traveled
in and out of locking splines, between locked and unlocked positions, these emails were
exchanged after the date at issue, and, again, fail to disclose each claimed limitation. See Second
Brunette Decl. Exs. 82–85, ECF 117. Similarly, while Nightforce does not contest that one
drawing in the six-drawing set (the ‘439 Assembly Drawing) shows every claim at issue in the
locking turret knobs, neither the ‘439 Assembly Drawing nor the six-drawing set is dated or
identifies Mr. Windauer as the author/inventor. See Second Ferris Decl. Ex. 3, ECF 118-1.
While no single piece of evidence corroborates Mr. Windauer’s testimony or
independently establishes an invention date, a jury could infer, under a rule of reason analysis,
sufficient support for Leupold’s position when viewing the evidence as a whole. For example, a
jury could infer, through certain distinctive details, that the April and May emails reference the
six-drawing set. In his April 21, 2004 email, for example, Andreas Schafer, on behalf of S&B,
writes that “[o]n the ‘Sperrenring’ there is an area of 61,6° that has NO notches. For what
reason?” Brunette Decl. Ex. 25 at 2. A drawing in the six-drawing set shows a sperrenring with
no notches on 61.6.° See Second Ferris Decl. Ex. 3 at 3. Similarly, in his April 27th email, Mr.
Windauer notes that “the angle of 5.7386 degrees does not allow for an even number of notches
in 360 degrees (360 / 5.7386 = 62.73 notches).” Brunette Decl. Ex. 25 at 2. The same drawing in
the six-drawing set shows each notch on the sperrenring at 5.7386 degrees. Second Ferris Decl.

Ex. 3 at 3. Thus, while the emails do not name or otherwise specifically reference the six-
drawing set, a jury could—from these details—connect a date (from the emails) with the
elements set forth in the drawings.
To the extent Nightforce challenges the probative value of these drawings, the Court
again sees only a question of fact. For example, Nightforce argues there are serious questions as
to whether these drawings were altered after the relevant date. Nightforce points out that the
drawings contain German words and the S&B name. According to Nightforce, Mr. Windauer
does not speak German and, as of April 28, 2004, S&B did not have the software to add its name
to the drawings. But Mr. Windauer clearly possessed some knowledge of relevant German terms,

as he exchanged emails discussing, for example, a “sperrenring.” And, according to Leupold,
these drawings originated from S&B; Mr. Windauer merely used S&B’s original drawings to
create the locking turret knob at issue. Oral Argument at 402.18 The Court also notes that the
drawings show a 5.7386 degree notch angle on the lock ring. Second Ferris Decl. Ex. 3 at 3. An

18 For the first time at oral argument, the parties discussed new data showing a creation date of
March 15, 2004 and a last modified date of January 12, 2005. Oral argument at 401, 422–23.
While the Court agrees with Nightforce that this last modified date raises questions as to the
relevance of these drawings, see Boydstun Metal Works, Inc. v. Cottrell, Inc., 519 F.Supp.2d
1119, 1139 (D. Or. 2007) (“[B]ecause of the disparity between the file’s created date and last
modified date, it is unclear how much of the design was complete in early 2003. The AutoCAD
file does not sufficiently corroborate the testimony of Cottrell employees about the design
process.”), for the reasons stated herein, there is still a question of fact to be resolved the jury.
April 28, 2004 email states, however, that this angle was changed to 5.71429 degrees. See
Brunette Decl. Ex. 25 at 1. In other words, a jury could infer that these drawings were created
before the April 28th email. In sum, the Court sees questions of fact to be resolved by the jury.
Similarly, as to the question of whether Mr. Windauer produced a prototype that worked
for its intended purpose, the Court agrees that Nightforce raises substantial questions as to

whether the evidence corroborates Mr. Windauer’s testimony. For example, the Court agrees
with Nightforce that Larsen’s testimony is unhelpfully vague. Larsen states only that he “made
locking turret knob parts for Mr. Windauer’s designs for Schmidt & Bender in the 2004
timeframe.” Larsen Decl. ¶ 7, ECF 116. And Leupold’s arguments regarding the four-drawing
set— “that S&B gave Mr. Windauer the project because the completed physical embodiment of
the first locking knob—the First Short-Dot Prototype—was successful and worked well”—are
entirely speculative. See Pl. Resp. Wind. 10.
However, in the light most favorable to Leupold, a jury could infer sufficient
corroboration. In an April 27, 2004 email, Mr. Windauer wrote that he planned to make “the

prototype in the next week for trials of fit, finish, and function.” Brunette Decl. Ex. 25 at 2. In
the May 17, 2004 “final invoice” for the “Short Dot elevation and windage knob design and
prototype,” Mr. Windauer wrote that he “made the required changes to the drawings after testing
the prototype.” Brunette Decl. Ex. 26 at 2. He also asked Hans Bender for his opinion on the
“Short Dot prototype knob.” Id. at 1. In an email from June 3, 2004, Mr. Schafer stated that Hans
Bender had forwarded him the “sample turret,” the sample turret was “looking (and working
good),” and that Mr. Windauer should adapt the “locking technology” for the illumination knob.
Second Brunette Decl. Ex. 85 at 2.19 Given the inferences discussed above (connecting the short
dot prototype to the six-drawing set), a jury could therefore conclude that Mr. Windauer
produced a prototype that worked for its intended purpose.
In sum, in the light most favorable to the non-moving party and under a “rule of reason”
analysis, a jury could infer that the emails and drawings, taken together, corroborate Mr.

Windauer’s testimony or independently establish the date of invention. A jury could also find,
however, that the evidence is impermissibly speculative and insufficient. Summary judgment is
not therefore appropriate at this time.
iii. Japanese Publication
Both parties move for summary judgment on the issue of whether the Japanese Patent
Application JP2004150699 (the “Japanese Publication”) anticipates the Windauer patents.
Nightforce argues the Japanese Publication anticipates (1) claims 1, 2, 4–6, 8–10, 12, and 19 of
‘429 patent; (2) claims 1, 2, 4, and 14 of the ‘736 patent; and (3) claims 1, 6, 10, 12, and 17 ‘120

patent. Leupold, in response, argues that these claims are entitled to an invention date “at least 10
days prior to the Japanese Publication” and are not, therefore, anticipated. Pl. Resp. Wind. 7.
Leupold also moves for summary judgment, arguing the Japanese Publication lacks (1) the rotary
lock actuator of claims 13 and 14 of the ‘429 patent, claim 10 of the ‘736 patent, and claim 4 of
the ‘120 patent; (2) a “second lock element [] movable in a radial direction relative to the
rotational axis of the adjustment knob” as required by claims 11 and 20 of the ‘120 patent; and

19 While Nightforce argues this email is too late to be relevant, the Court does not necessarily
agree. The email indicates that, by June 3, 2004, Mr. Schafer—presumably located in
Germany—had received and reviewed a sample turret forwarded from Hans Bender. While by
no means dispositive, a jury could therefore infer that the prototype was completed before May
27, 2004, the relevant prior art date.
(3) “the detent mechanism or pin biased against the first lock element or locking surface”
required by claims 14 and 15 of the ‘120 patent. Pl. Mot. 28.
To the extent the parties’ motions rely on the invention date or priority date analyses, the
motions are denied. For the reasons stated above, there is a question of fact as to whether Mr.
Windauer possessed the claimed invention before May 27, 2004—the date the Japanese

Publication was filed.
Leupold’s remaining arguments as to claims 13 and 14 of the ‘429 patent, claim 10 of the
‘736 patent, and claims 4, 11, 14, 15, and 20 of the ‘120 patent are, however, well taken.
Nightforce does not dispute the missing claim limitations. Summary judgment is therefore
granted.
iv. Canon XL-2
Both parties move for summary judgment on the Canon XL-2. Leupold raises the same
priority date and invention date arguments addressed above. Leupold also argues that the Cannon

XL-2 does not disclose required elements. Nightforce, in turn, asks for summary judgment on the
narrow issue of whether “the XL2 was sold in the United States no later than August 31, 2004.”
Def. Mot Summ. J. on the Windauer Patents (“Def. Mot. Wind.”) 8, ECF 97.
a. Leupold’s Motion
To the extent Leupold’s motion again relies on its invention date or priority date
analyses, the motion is denied for the reasons stated above. To the extent Leupold’s motion relies
on missing claim limitations, the arguments are similarly without merit.
Leupold first argues that “the Canon Power Dial and ND Ring each lack the rotary lock
actuator of claims 13 and 14 of the ‘429 patent, claim 10 of the ‘736 patent, and claim 4 of the
‘120 patent.” Pl. Mot. 29. According to Leupold, DuFaux merely describes an operation that
amounts to a “push to unlock, and then rotate freely.” Id. This does not, however,
satisfy the claim limitation of disengaging the lock by rotating “the locking
selection member” (the ‘429 patent, claims 13 and 14), “the lock actuator” (the
‘736 patent, claim 10), or “the lock-release mechanism” (the ‘120 patent, claim
4).

Id. (emphasis omitted). Thus, according to Leupold, “DuFaux does not identify a rotating means
of locking / unlocking—rather he describes rotation of a dial that has already been unlocked by
a push-button means of locking / unlocking.” Pl. Reply 28 (emphasis in original).
Nightforce, in turn, argues that the phrase “disengaging the lock by rotating” does not
appear in any of the claims, and Leupold does not argue for claim construction. The Court
agrees. Claims 13 and 14 of the ‘429 patent provide:
13. The locking turret knob according to claim 12, wherein the force
rotates the locking selection member when the force is applied in a first rotational
direction.

14. The locking turret knob according to claim 13, wherein when the force
is removed and when a second force that is applied to the locking selection
member in a second rotational direction, the locking selection member enables at
least one engagement member of the first member to engage a corresponding
engagement surface of the second member.

‘429 Patent col. 11 ll. 27-35. Claim 10 of the ‘736 patent provides:

A device according to claim 2, wherein the adjustment knob further comprises:

a lock actuator in operative association with the locking mechanism,
wherein the lock actuator includes a cam surface aligned with the second
portion of the locking mechanism and the lock actuator is rotatable about
the axis of rotation between (1) a first rotational position at which the cam
surface urges the second portion of the locking mechanism to the locked
position and (2) a second rotational position at which the second portion of
the locking mechanism is free to move into a recess of the cam surface and
thereby into the unlocked position.

‘736 Patent col. 11 ll. 56-67. Claim 4 of the ‘120 patent provides for:
the adjustment apparatus of claim 2, wherein the lock-release mechanism is rotatable
about the rotational axis relative to the adjustment knob to disengage the first and 30
second lock elements.

‘120 Patent col. 11 ll. 28-31. The Court sees no obvious requirement for a lock disengaged by
rotation (or excluding the use of a push button). And, while Leupold may ultimately prevail in its
interpretation of the claim language, it provides no further explanation or argument to connect
the dots in its reply. Instead, it appears to argue only that the parties’ experts agree on the
physical structure, leaving no question of fact. However, given that the parties do not agree on
the significance of this structure, and Leupold has failed to adequately explain why its position is
correct, the Court cannot grant summary judgment on the record before it.
Second, as to claims 4, 11, 14, 15, and 20 of the ‘120 patent, Leupold also argues that:
(1) “[T]he Canon device is neither a ‘sighting device’ nor a ‘riflescope’ as
required by each of independent claims 1 and 17, respectively, and their
dependent claims”; and

(2) “The Canon device also lacks an ‘adjustment mechanism configured to
adjust a setting of the [sighting device or riflescope]’ and ‘an adjustment
knob operatively coupled to the adjustment mechanism,’ as required by
both independent claims of the ’120 patent.”

Pl. Mot. 29–30.

In response, Nightforce points out that DuFaux opines that the Canon XL-2 can serve as a
sighting device (claims 4, 11, 14, and 15) or riflescope (claim 17).20 See DuFaux Report ¶¶ 169,
184. As to the remaining limitations, it argues that

20 Specifically, on the issue of whether the Canon XL-2 could serve as a riflescope, DuFaux
opines that it “could be used as a Spotter type scope, and is therefore a riflescope device.”
DuFaux Report ¶ 169. While Byron opines that the Canon XL-2 could not be used as a
riflescope, this opinion is based entirely on his experience as a POSA. Byron Rebuttal ¶¶ 293,
309 (“Based on my specialized knowledge, experience, training, and skill in the field, it is my
opinion that the Canon XL-2 video camera is not an aiming device or a riflescope.”). For
example, he argues that spotting targets “is a separate function from aiming” and “a riflescope is
necessarily attached to the weapon itself.” Id. While Byron may be correct, he does not argue for
Leupold’s argument is based on: i) construing “operatively coupled” to
mean a mechanical connection, not electrical, and ii) alleging that
Nightforce’s expert does not address these elements in the claims. With
respect to construing “operatively coupled,” while the Court has not been
asked by Leupold to narrowly construe this phrase to limit it to a
mechanical connection, Nightforce’s expert has in any event described
mechanical connections. Second, Nightforce’s expert does address the
allegedly missing element: i) for the Canon Power Dial, the “Metal
Connect Plate on the Spindle Component provides an adjustment
mechanism” and moves when the Power Dial is moved (so they are
physically linked) (Ex. V, ¶ 169), and ii) for the Canon ND Ring, the
Adjusting Link (part of adjustment mechanism) “mates with the Adjustor
Slot on the Sling Ring [knob]” (again a physical connection). (Id. ¶184.)
As the allegedly missing element has been addressed by Nightforce’s
expert, there are disputed facts.

Def. Resp. 32 (emphasis in original).
Leupold does not respond to these arguments in its reply. Instead, it simply states that
“DuFaux’s statements about the claim elements that are missing from the Canon XL-2 camera
are implausible and irrelevant — no reasonable juror could find those elements in the Canon XL-
2 camera.” Pl. Reply 28. Leupold does not explain why these statements are implausible and
irrelevant, or provide the Court with any further argument to substantiate this conclusion. At this
point in time, the Court sees only conflicting testimony between the parties’ experts. Summary
judgment is therefore not appropriate.
b. Nightforce’s Motion
Nightforce moves for summary judgment on the limited issue of whether the Canon XL-2
“was sold in the United States no later than August 31, 2004.” Def. Mot. Wind. 17. In support of
this motion, Nightforce offers “documents and other business records showing that the XL2
launched in this country in the summer of 2004.” Id.; Tran Decl. Exs. 14–16, ECF 98-3 to 98-5.

claim construction or cite the patents at issue. The Court therefore sees only a dispute between
experts at this time.
It also relies on the declaration of Vince Agatep, a Canon employee, who provides the
evidentiary basis for these documents and, according to Nightforce, establishes that “(1) Canon
‘offered for sale in the United States the XL2 video camcorder product at least by August 30,
2004’ and (2) ‘the XL2 video camcorder bearing Serial No. 332880101028 was sold in the
United States to customer A68T (Apple Computer, Inc.) no later than Aug. 31, 2004.’” Def. Mot.

Wind. at 17–18 (quoting Agatep Decl. at ¶ 8, 9, ECF 100).
In response, Leupold challenges the admissibility of Nightforce’s evidence.21 First,
Leupold argues that “there is no basis to believe that Mr. Agatep, a representative of a third party
who works well outside the Court’s trial subpoena power, will be available or willing to
voluntarily appear to testify at trial.” Pl. Resp. Wind. 15. In the Ninth Circuit, evidence that
could be presented in an admissible form at trial may be considered at summary judgment. See
Fraser v. Goodale, 342 F.3d 1032, 1037 (9th Cir. 2003) (“Because the diary’s contents could be
presented in an admissible form at trial, we may consider the diary’s contents in the Bank’s
summary judgment motion.”); see also Fed. R. Civ. P. 56, 2010 Amendment Advisory

Committee Notes (“Subdivision (c)(2) provides that a party may object that material cited to
support or dispute a fact cannot be presented in a form that would be admissible in evidence. . . .
The burden is on the proponent to show that the material is admissible as presented or to explain
the admissible form that is anticipated.”) (emphasis added). Here, there is no evidence that Mr.
Agatap will not be available for trial. See, e.g., Murphy v. Cty. of Yavapai, No. CV-04-1861-

21 To the extent Leupold argues that the Court may not issue summary judgment on the narrow
issue requested, the Court notes that Federal Rule of Civil Procedure 56(a) allows for a party to
move for summary judgment on “part of [a] claim or defense.” See also Fed. R. Civ. P. 56(a),
2010 Amendment Advisory Committee Notes (“The first sentence is added to make clear at the
beginning that summary judgment may be requested . . . as to a claim, defense, or part of a claim
or defense.”).
PCTDGC, 2006 WL 2460916, at *5 (D. Ariz. Aug. 23, 2006) (rejecting proposed testimony at
summary judgment when it was “undisputed that [the witness] will not be available to testify at
trial” because of a confidentiality agreement).22 Thus, given that Mr. Agatap could testify at
trial—and there is no evidence that he will not—the Court will consider his declaration at
summary judgment.23

Leupold also argues that because Mr. Agatep does not have personal knowledge about
the sale of the Canon XL-2 in 2004, he cannot authenticate the documents at issue. Pl. Resp.
Wind. 16. Nightforce first replies that Leupold stipulated to paragraphs 1 through 7 of Agatep’s
declaration. But Leupold did not stipulate to paragraphs 8 and 9—the paragraphs stating the
conclusions at issue here—and also “reserve[d] the right to object . . . to the admissibility of
those statements[s] including based on, inter alia, lacking of personal knowledge, foundation,
and hearsay.” Pellikaan Decl. II Ex. 1 at 1, ECF 145-1. The Court agrees, however, that
Leupold’s arguments about Mr. Agatep’s personal knowledge are unavailing.
Under Federal Rules of Evidence 803(6), business records are admissible if

22 Leupold also cites Santos v. Murdock, a Second Circuit case from 2001. In that case, the court
found that the affidavit at issue—from a witness recanting his previous statements implicating
plaintiff in a criminal case—could only be admitted at trial for impeachment purposes and
therefore could not be used to support plaintiff’s case at summary judgment. 243 F.3d 681, 684
(2nd Cir. 2001). It then found that (a previous version of) Rule 56 also required an “implicit or
explicit showing that the affiant is prepared to testify in a manner consistent with an affidavit is
required to oppose summary judgment.” Not only does Leupold fail to cite any similar case
affirming this position in the Ninth Circuit, but the current version of Rule 56 requires only that
“[a]n affidavit or declaration used to support or oppose a motion must be made on personal
knowledge, set out facts that would be admissible in evidence, and show that the affiant or
declarant is competent to testify on the matters stated.” Fed. R. Civ. P. 56(c)(4). Moreover, as
discussed above, there is no indication in the record that Mr. Agatep, despite submitting the
declaration at issue, would not testify if called at trial.

23 The Court also notes that business records “that meet[] the requirements of Rule 803(6)(A)-
(C), as shown by a certification of the custodian or another qualified person” are self -
authenticating. Fed. R. Evid. 902(11).
(A) the record was made at or near the time by—or from information transmitted
by—someone with knowledge;
(B) the record was kept in the course of a regularly conducted activity of a
business, organization, occupation, or calling, whether or not for profit;
(C) making the record was a regular practice of that activity;
(D) all these conditions are shown by the testimony of the custodian or another
qualified witness, or by a certification that complies with Rule 902(11) or (12) or
with a statute permitting certification; and
(E) the opponent does not show that the source of information or the method or
circumstances of preparation indicate a lack of trustworthiness.

Rule 803(6) does not require the custodian of those records to have personal knowledge about
the creation or accuracy of the business records. Fed. R. Evid. 803, 1974 Enactment Notes (“the
use of the phrase ‘person with knowledge’ is not intended to imply that the party seeking to
introduce the memorandum, report, record, or data compilation must be able to produce, or even
identify, the specific individual upon whose first-hand knowledge the memorandum, report,
record or data compilation was based. A sufficient foundation for the introduction of such
evidence will be laid if the party seeking to introduce the evidence is able to show that it was the
regular practice of the activity to base such memorandums, reports, records, or data compilations
upon a transmission from a person with knowledge.”); see also United States v. Armstrong, 619
F.3d 380, 384–85 (5th Cir. 2010) (“There is no requirement that the witness who lays the
foundation be the author of the record or be able to personally attest to its accuracy.”). Instead,
the declarant must simply “[1] explain the record keeping system of the organization and [2]
vouch that the requirements of Rule 803(6) are met.” Armstrong, 619 F.3d at 385 (quoting
United States v. Brown, 553 F.3d 768, 792 (5th Cir. 2008)). Here, Mr. Agatep states that the
documents at issue “represent product and sales information that ha[ve] been stored and
maintained in [Canon’s] ordinary course of business.” Agatep Decl. at ¶ 6. These documents
“were created in the ordinary course of business at or near the time of the events . . . described in
the records, by a person with knowledge,” as part of Canon’s regular business practice. Id. ¶ 7.
These records are therefore admissible.
Finally, in attempt to perhaps show that the “source of the information or the method or
circumstances of preparation indicate a lack of trustworthiness,” see Fed. R. Evid. 803(6)(e),
Leupold argues that the documents themselves “raise as many questions as they answer,” Pl.

Wind. Resp. 16. But Leupold identifies only a single “question:” that the “‘SHIP TO’ address
lists only ‘999999’” for the Apple Computer Company. Id. (citing Agatep Decl. Ex. B at 1).
However, the Canon documents themselves show that this code (“999999”) corresponds to a
street address for Apple Computer. See Agatep Decl. Ex. A. The Court is not therefore
convinced that the documents are untrustworthy or raise a question of material fact.
Because Leupold has not identified any contradictory evidence or raised any persuasive
arguments to undermine Nightforce’s position, the Court finds there is no dispute of fact as to
whether the XL-2 was sold in the United States by August 31, 2004. Nightforce is entitled to
summary judgment on this narrow issue.

v. Casas Reference
Leupold first argues that because U.S. Patent No. 7,997,163 (the “Casas Reference”) was
filed on June 13, 2005, it is not prior art to those claims entitled to the Windauer Provisional’s
filing date. For the reasons stated above, there are questions of fact as to which claims are
entitled to the Provisional’s 2004 filing date. This argument is therefore without merit.
As to the remaining claims, Leupold argues that the Casas Reference lacks (1) “the rotary
lock actuator of claims 13 and 14 of the ‘429 patent, claim 10 of the ‘736 patent, and claim 4 of
the ‘120 patent;” (2) the “second lock element” which “is movable in a radial direction relative to
the rotational axis of the adjustment knob” of claims 11 and 20 of the ‘120 patent; and (3) “the
detent mechanism or pin biased against the first lock element or its locking surface of claims 14
and 15 of the ‘120 patent.” Pl. Mot. 27. Nightforce does not dispute these missing claim
limitations. Summary judgment is therefore granted.
vi. Gorsek Reference

Leupold argues that U.S. Patent No. 4,779,305 (the “Gorsek Reference”) cannot
anticipate the ‘429 patent because it does not disclose a “locking turret knob” as required by all
asserted claims.24 In response, Nightforce argues only that a “turret knob” is not a claim
limitation because the phrase appears only in the preamble of the claims. Given that the ‘429
patent is titled “Locking turret knob,” and the term “turret knob” appears in the patent’s abstract,
the “summary of the disclosure,” the preamble of every claim, and every embodiment described
in the specification, the Court finds that a turret knob is a claim limitation. Leupold’s motion for
summary judgment on this issue is therefore granted.
C. Obviousness

Leupold argues that Nightforce cannot prove any Windauer patent claim invalid as
obvious. First, Leupold argues that Nightforce has not identified any prior art for those claims
entitled to the Provisional’s 2004 filing date. For the reasons stated above, there is a question of
fact as to whether these claims are, in fact, entitled to the Provisional’s 2004 filing date. This
argument is therefore without merit.
Second, Leupold argues there is no evidence that any prior art describes a “rotary lock
actuator as claimed in claims 13 and 14 of the ‘429 patent, claim 10 of the ‘736 patent, and claim
4 of the ‘120 patent.” Pl. Mot. 31. This argument again relies on Leupold’s position that the
Canon XL-2 does not contain a rotary lock actuator. For the reasons stated above, there is a

24 Nightforce does not assert the Gorsek Reference against the ‘736 or ‘120 patents.
question of fact as to whether the Canon XL-2 contains a rotary lock actuator. This argument is
therefore without merit.
Finally, with respect to claims 11, 14, 15, and 20 of the ‘120 patent, Leupold argues that
Nightforce has not offered any non-hindsight rationale or motivation to combine references.
Leupold also argues that, to the extent Nightforce relies on the Canon XL-2 and the Gorsek

Reference, both references are from non-analogous fields.25
First, on the issue of hindsight bias, Leupold argues only that “Nightforce’s expert
admitted in deposition that his obviousness analysis relied on hindsight bias, by starting with the
claim language and then looking back on the prior art to find out which combination of
references would best fit the claims.” Pl. Reply 30 (citing Third Brunette Decl. Ex. 101
(“DuFaux Dep. II”) 223:11–234:2, ECF 136-7, and Mintz v. Dietz & Watson, Inc., 679 F.3d
1372, 1379 (Fed. Cir. 2012)). DuFaux did confirm that “once [he] properly construed the claim
in [his] mind, [he would] then look back on the prior art with whatever proper construction of the
claim [he] felt was appropriate.” DuFaux Dep. II at 233:17–21. But Leupold offers no argument

or support for its position that an expert’s attempt to first understand the claim necessarily
indicates hindsight bias. Leupold’s cited case only highlights the dearth of analysis. In Mintz v.
Dietz & Watson, Inc., the court explicitly highlighted the importance of secondary factors—
specifically, the objective evidence of non-obviousness—to the court’s analysis of hindsight
bias. 679 F.3d at 1378–80. Yet Leupold offers no argument about these secondary factors or any
other relevant analyses. With no further argument or explanation, the Court cannot find this
argument sufficiently developed at this time.

25 Leupold also argues, again, that DuFaux cannot opine as a POSA. The argument is without
merit.
As to the issue of non-analogous art, Leupold relies on expert Byron to argue that
non-riflescope knobs are in an entirely different and non-analogous field and that
a person skilled in riflescope design would not reasonably look to the field of
electronics for knob components or concepts because the skilled person would not
expect them to survive weapon recoil or the harsh environment conditions in
which riflescopes are designed to operate.

Pl. Mot. 32 (citing Byron Rebuttal ¶¶ 31–36, 151–54). As discussed at length above, neither
party applies or even references the applicable test. Leupold offers no argument, evidence, or
citation beyond its own expert’s testimony. It also fails to offer any analysis tied to the patent
language itself. In doing so, it ignores Nightforce’s argument that “most of the asserted
Windauer claims are not limited to riflescopes (e.g., none of the claims of the ‘429 patent are
limited to riflescopes[]).” Def. Resp. 34. It also ignores the argument that the Windauer
specification shows “the inventor equated firearms and non-firearm devices (e.g., microscopes
and telescopes),” id., and DuFaux’s opinion that experts would, in fact, look to devices such as
the Canon XL-2. See, e.g., DuFaux Report ¶¶ 131–44. Thus, with no further argument or
analysis as to why the Canon XL-2 and Gorsek inhabit non-analogous fields, the Court sees only
a dispute between experts at this time. Summary judgment is therefore denied.
D. 35 U.S.C. § 112 ¶ 2
Patent claims must particularly point out and distinctly claim the subject matter regarded
as the invention. 35 U.S.C. § 112 ¶ 2 (pre-AIA). “[A] patent’s claims, viewed in light of the
specification and prosecution history, [must] inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910
(2014). If a claim fails to do so, it is invalid as indefinite. Id. at 901. Whether a claim is indefinite
is determined from the perspective of one of ordinary skill in the art as of the time the application
for the patent was filed. Id. at 908. As a challenge to a patent’s validity, indefiniteness under §
112 must be shown by clear and convincing evidence. Microsoft Corp. v. I4I Ltd. Partnership,
564 U.S. 91, 95 (2011).
Leupold argues that Nightforce cannot show that any Windauer claim is invalid as
indefinite. First, Leupold argues that because Mr. DuFaux is not a POSA, he cannot opine as to
whether the claims would inform those skilled in the art about the scope of the invention with

reasonable certainty. For the reasons stated above, this argument is without merit.
Second, in the alternative, Leupold argues that “the intrinsic record of the Windauer
patents strongly suggests that the allegedly indefinite terms (‘engagement member’ and
‘engagement surface,’ ‘first portion’ and ‘second portion,’ ‘first lock element,’ and ‘second lock
element’) have defined, objective boundaries to their meaning in light of the specification.” Pl.
Mot. 33. According to Leupold, “[t]he Windauer Provisional states that ‘the knob is locked via
mated spline grooves and/or mated locking pins and slots or holes,’” Byron opines that a POSA
“would have understood how to make and use the claimed invention,” and DuFaux himself
“testified in deposition that he had an understanding of the terms ‘engagement member’ and

‘engagement surface.’” Id. First, Leupold fails to offer any explanation for why it believes the
intrinsic record “strongly suggests that the allegedly indefinite terms . . . have defined, objective
boundaries to their meaning in light of the specification.” Instead, it offers a single citation to the
Windauer Provisional, without argument or explanation as to the significance of this citation.
Second, the Court has reviewed Leupold’s citation to Byron’s rebuttal report and sees no
statement that “a POSA at the time of Windauer’s invention would have understood how to
make and use the claimed invention, including each of the six allegedly indefinite terms.” See id.
(citing Byron Rebuttal ¶¶ 28–29). Rather, Byron merely recites the legal standards for
indefiniteness.
Finally, the Court does not agree that DuFaux’s excerpted deposition testimony supports
Leupold’s position that DuFaux understood “engagement member and engagement surface” to
be “limited to physical structures that engage something by contact or force.” See e.g., Pl. Reply
31; Brunette Decl. Ex. 48 (“DuFaux Dep. III”) at 67:20–68:21, ECF 92-7 (“I have to think about
that, whether force is required or not, or just simple contact. Contact wouldn’t necessarily imply

force. I may have to think more about that.”). And, even if the Court accepted Leupold’s
position, the Court sees no argument as to why or how this “understanding” contradicts
DuFaux’s opinion or suggests that the claims are sufficiently definite.
With no other argument or citation related to the patents’ claims, specifications, or
prosecution history, the Court sees only DuFaux’s report. Even if this report is ultimately
unpersuasive, Leupold’s motion provides no support for its own contradictory position. Given
this lack of relevant development, argument, and support, the Court cannot resolve summary
judgment at this time. Summary judgment is therefore denied.
E. 35 U.S.C. § 112 ¶ 1

In its opening brief, Leupold raises a single argument under 35 U.S.C. § 112 ¶ 1: that
Nightforce cannot prove invalidity because DuFaux cannot opine as a POSA. Again, for the
reasons stated above, the argument is without merit. In its reply, however, Leupold raises new,
substantive arguments regarding DuFaux’s opinions. For example, Leupold argues that
DuFaux’s opinions “are not relevant under the correct legal standard” and “fail under the
longstanding rule that ‘[a]n applicant is not required to describe in the specification every
conceivable and possible future embodiment of his invention.’” Pl. Reply 32 (citing Cordis
Corp., 339 F.3d at 1365). As an initial matter, these arguments are not properly before the Court.
See, e.g., Novosteel SA v. U.S., Bethlehem Steel Corp., 284 F.3d 1261, 1274 (Fed. Cir. 2002)
(“Raising the issue for the first time in a reply brief does not suffice; reply briefs reply to
arguments made in the response brief—they do not provide the moving party with a new
opportunity to present yet another issue for the court’s consideration.”). Even if these arguments
were properly before the Court, for the reasons stated above, they remain unsupported by
sufficient explanation or analysis. See supra section II.B.i. Summary judgment on this issue is

therefore denied.
Remaining Issues
Leupold moves for summary judgment on various remaining affirmative defenses. These
defenses include equitable estoppel, waiver, acquiescence, mitigation, and laches. The Court has
already addressed and denied Leupold’s motion regarding the issue of equitable estoppel.
Leupold & Stevens v. Lightforce USA, Inc., No. 3:16–cv–01570–HZ, 2019 WL 4696406, at * 19
n.3 (D. Or. Sept. 26, 2019) (“Leupold’s ‘argument’ is comprised of a single paragraph that fails
to identify, at a minimum, the patent at which the motion is directed. Because the argument is not
sufficiently developed, the Court will not address it at this time.”). Leupold’s “arguments” on the

issues of “waiver, acquiescence, and failure to mitigate damages” are similarly undeveloped; the
Court sees a single sentence with no supporting argument. See Pl. Mot. 34. (“Nightforce also
pleaded generic affirmative defenses of . . . waiver, acquiescence, and failure to mitigate
damages, but has no evidence to support these affirmative defenses.”). Again, Leupold does not,
at a minimum, identify which patent the motions are directed to or the relevant legal standards.
Because these arguments are insufficiently developed, the Court will not address them at this
time.
Finally, Leupold argues it is entitled to summary judgment on the issue of laches.
According to Leupold, laches is no longer a defense to patent damages claims under SCA
Hygiene Prod. v. First Quality Baby Prod., LLC, 137 S. Ct. 954, 967 (2017). Nightforce raises
no argument to the contrary. The Court therefore agrees that summary judgment is warranted.
CONCLUSION
For the reasons stated above, the Court rules as follows:
(1) Leupold’s motion for summary judgment on whether Nightforce riflescopes

with the SA271 turret infringe claims 1–3, 5–7, 12, 13, and 15–18 of the ‘068
is DENIED.
(2) Nightforce’s motion for summary judgment on whether Nightforce riflescopes
with the SA271 turret infringe claims 1–3, 5–7, 9, 10, 12, 13, and 15–18 of the
‘068 is GRANTED.
(3) Both parties’ motions for summary judgment on whether Nightforce
riflescopes with the SA267 turret infringe claims 1–3, 5–7, 12, 13, and 15–18
of the ‘068 are DENIED.
(4) Leupold’s motion for summary judgment on whether claims 1, 3, 9–12, 18–

21, 23, and 25 of the ‘408 patent are infringed is DENIED.
(5) Leupold’s motion for summary judgment on whether the Canon XL-2
anticipates claims 1, 3, 9–12, 18–21, 23, and 25 of the ‘408 patent and claims
1, 5–7, 9, 10, 12, 13, and 15–18 ‘068 patent is GRANTED in part and
DENIED in part.
(6) Leupold’s motion for summary judgment on whether the Windauer ‘490
Application anticipates claims 1, 3, 11, 12, 18–21, 23, and 25 of the ‘408
patent is GRANTED.
(7) Leupold’s motion for summary judgment on whether the asserted ‘408 and
‘068 claims are obvious is DENIED.
(8) Leupold’s motion for summary judgment on whether the asserted ‘408 and
‘068 claims are invalid under 35 U.S.C. § 112 is DENIED.
(9) Leupold’s motion for summary judgment on whether Nightforce riflescopes

with the Rotary Brake Turrets infringe claims 1, 2, 6, 8–10, 12–14, and 19 of
the ‘429 patent; claims 1, 2, 4, 7, 10, and 14 of the ‘736 patent; and claims 1–
6, 10–12, 14, 15, and 17–24 of the ‘120 patent is DENIED.
(10) Leupold’s motion for summary judgment on whether Nightforce BEAST
and ATACR riflescopes with ZeroHold Turrets infringe claims 1, 4, 5, 9, 10,
12, and 15 of the ‘429 patent; claims 1, 2, 7, and 14 of the ‘736 patent; and
claims 1–3, 5, 6, 11, 12, and 17–24 of the ‘120 patent is GRANTED to the
extent Nightforce does not prevail on its § 1498 defense at trial. Leupold’s
motion for summary judgment on whether Nightforce BEAST and ATACR

riflescopes with the SA271 ZeroHold Turret infringe claim 3 of the ‘736
patent and 7, 8, and 13 of the ‘120 patent and BEAST and ATACR riflescopes
with the SA267 ZeroHold Turret infringe claims 7 and 8 of the ‘120 patent is
GRANTED to the extent Nightforce does not prevail on its § 1498 defense at
trial.
(11) Leupold’s motion for summary judgment on whether claims 1, 2, 4–6, 8–
10, 12, 15, and 19 of the ‘429 patent; claims 1–4, 7, and 14 of the ‘736 patent;
and claims 1–3, 5–8, 10, 12, 13, 17–19, and 21–24 of the ‘120 patent are
entitled to the priority fi

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10392625. Public record. Not legal advice.