United States District Court, D. Idaho
MEMORANDUM DECISION AND ORDER
C. Nye, U.S. District Court Judge.
before the Court is Plaintiff Patent Holder LLC's Motion
to Amend/Correct (Dkt. 48) and Defendants Lone Wolf
Distributors, Inc, and Lone Wolf R&D, LLC's
(collectively “Lone Wolf”) two Motions for
Summary Judgment (Dkts. 40, 50). On October 23, 2018, the
Court held oral argument on all motions and took the matters
under advisement. Upon review, the Court now issues the
following decision GRANTING Patent Holder's Motion to
Amend/Correct, DENYING Lone Wolf's first Motion for
Summary Judgment (Dkt. 40), and WITHHOLDING RULING on Lone
Wolf's second Motion for Summary Judgment (Dkt. 50)
pending further briefing.
20, 2018-prior to the Markman hearing in this
case-Lone Wolf moved for Summary Judgement. Dkt. 40. The
Court temporarily stayed that Motion while the
Markman issues were underway.
the Markman hearing, the Court reinstated a briefing
schedule for the pending Motion for Summary Judgment. During
the Markman hearing, Patent Holder indicated that it
would be filing a Motion to Amend to correct its infringement
contentions. Patent Holder subsequently filed such a motion.
Dkt. 48. Lone Wolf then filed a second Motion for Summary
Judgment. Dkt. 50. The substance of this second motion is
almost identical to the first motion, but it is directed at
the product Patent Holder seeks to add by way of its Motion
to Amend and adds one additional ground in support of summary
judgment as to the first accused product.
Patent at Issue
sole patent at issue in this case is U.S. Patent 9, 404, 700
(“the ‘700 patent”). The ‘700 patent
discloses “a firearm enhanced trigger control
connector.” Dkt. 43-2, at 1, abstract. In
layman's terms, the ‘700 patent discloses an
after-market firearm product that, when placed in a Glock
handgun, shortens the distance that the trigger must travel
to discharge the firearm. Said differently, with such a
product installed, the space from where a person begins to
pull, or squeeze, the trigger, and the point at which the
trigger actually engages the firing pin is shortened. The
purpose of this device is to increase precision and accuracy
Motion to Amend/Correct
Patent Holder originally filed this case, its Infringement
Contentions alleged that Lone Wolf's product designated
as LWD-342 G42/43 (the “342” product) was the
sole accused product. By way of the instant motion, Patent
Holder seeks to amend its Infringement Contentions to add one
more product-Lone Wolf's LWD-342-1 (the
“342-1” product)-and four additional claims.
the District of Idaho Local Patent Rules, “amendments
to the Infringement Contentions or the Invalidity Contentions
may be made only by order of the Court upon a timely
application and showing of good cause.” Dist. Idaho
Loc. Patent R. 3.7.
under Rule 3.1, a Plaintiff must provide a “claim
chart” which identifies “specifically where each
limitation of each asserted claim is found within each
Accused Instrumentality.” Dist. Idaho Loc. Patent R.
opposition, Lone Wolf argues that Patent Holder's Motion
is untimely, that it has not met the requisite good cause
standard, and that its claim chart is deficient. The Court
will briefly address each argument in turn.
Wolf asserts that Patent Holder's Motion is untimely as
the Court has already engaged in claim construction. Lone
Wolf is concerned that adding additional claims at this point
could result in the Court having to undertake claim
construction a second time. This is extremely unlikely. Even
with the addition of an accused product and some claims,
there are no new claim terms that must be decided.
Each of the asserted claims are dependent claims-i.e. they
are based upon independent claims (specifically claim
1)-which the Court has already construed.
the fact that Patent Holder's current counsel was not the
original counsel in this case provides a certain amount of
justification for the delay. The fact that it took some time
for local counsel to “get up to speed” is not
unusual. As will be discussed below, there is good cause for
this delay and granting the Motion-even at this
“late” stage-will not prejudice Lone Wolf.
all available information, it does not appear that any
additional claim construction will be necessary, and the
Court finds that Patent Holder filed its motion in as timely
a manner as it could under the circumstances.
the Court must determine if good cause exists to allow an
amendment to the Infringement Contentions in this case. Local
Patent Rule 3.7 outlines a non-exhaustive list of
what constitutes good cause. One of those examples is
“recent discovery of material, prior art despite
earlier diligent search.” Dist. Idaho Loc. Patent R.
Patent Holder asserts that, until recently, Lone Wolf had not
fully responded to its discovery requests. When Lone Wolf did
respond, its responses included new and non-public
information, which-when reviewed by Patent Holder-allowed it
to identify another accused product.
contrast, Lone Wolf asserts that the newly identified product
has been available on its website for many months and, had
Patent Holder been diligent, it could have easily identified
this product even before Lone Wolf responded to the
discovery requests. Lone Wolf asserts that Patent Holder had
a duty to be thorough, and claims “it would have taken
less than 30 seconds to search the Defendants' website to
see all of Defendants' connector products.” Dkt.
52, at 3. According to Lone Wolf, because Patent Holder ...